No. 16In the
Supreme Court of the United States
STEPHANIE LENZ,
Petitioner,
v.
UNIVERSAL MUSIC CORP., UNIVERSAL MUSIC
PUBLISHING, INC. AND UNIVERSAL MUSIC
PUBLISHING GROUP,
Respondent.
On Petition for a Writ of Certiorari to the United
States Court of A ppeals for the Ninth Circuit
PETITION FOR A WRIT OF CERTIORARI
A shok Ramani
Michael S. Kwun
Keker & Van Nest
633 Battery Street
San Francisco, CA 94111
(415) 391-5400
*Counsel of Record
Cindy Cohn
Corynne McSherry*
Daniel K. Nazer
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
[email protected]
Attorneys for Petitioner
August 12, 2016
266964
A
(800) 274-3321 • (800) 359-6859
i
QUESTION PRESENTED
Whether the Ninth Circuit erred in concluding that
the affirmation of good faith belief that a given use of
material use is not authorized “by the copyright owner,
its agent, or the law,” required under Section 512(c) of
the Digital Millennium Copyright Act (“DMCA”), may
be purely subjective and, therefore, that an unreasonable
belief—such as a belief formed without consideration of
the statutory fair use factors—will not subject the sender
of a takedown notice to liability under Section 512(f) of
the DMCA?
ii
TABLE OF CONTENTS
Page
QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . i
TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . ii
TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . . iv
TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . v
PETITION FOR WRIT OF CERTIORARI . . . . . . . . . 1
OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
RELEVANT STATUTORY PROVISIONS . . . . . . . . . . 4
Statement of the case . . . . . . . . . . . . . . . . . . . . 4
I. Factual BACKGROUND . . . . . . . . . . . . . . . . 4
II. PROCEDURAL BACKGROUND . . . . . . . . . . . 6
REASONS FOR GRANTING THE PETITION . . . . . 7
I. PROPER INTERPRETATION OF THE
DMCA NOTICE A ND TA KEDOW N
PR OV I S IONS I S A N I S S U E OF
NATIONAL IMPORTANCE . . . . . . . . . . . . . . . . 8
iii
Table of Contents
Page
II.B Y U N D E R M I N I N G L E G A L
PROTECTIONS FOR ONLINE FAIR
U S E S , T H E DE C I S ION BEL OW
T H WA R T S C O N G R E S S I O N A L
I N T EN T A N D R E S H A PE S T H E
CONTOURS OF COPYRIGHT LAW . . . . . . . . 12
A. The Decision Undermines Crucial
Protections for Online Speech . . . . . . . . . . 13
1. DMCA Abuse Is Common . . . . . . . . . . 13
2. Congress Intended Section 512(f)
To Be a Meaningful Check on
Such Abuse . . . . . . . . . . . . . . . . . . . . . . . 20
3. The Decision Below Undermines
the Fair Use Protections Congress
Intended . . . . . . . . . . . . . . . . . . . . . . . . . 22
B. The Decision Undermines Online
Fair Use, Thereby Disturbing the
Traditional Contours of Copyright . . . . . . 24
III.T H I S I S T H E R IGH T CA S E T O
ADDRESS A QUESTION OF NATIONAL
IMPORTANCE . . . . . . . . . . . . . . . . . . . . . . . . . . 26
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
iv
TABLE OF APPENDICES
Page
Appendix A — ORDER AND AMENDED
opinion of the UNITED STATES
COURT OF APPEALS FOR THE NINTH
CIRCUIT, FILED MARCH 17, 2016 . . . . . . . . . . . . 1a
A ppendi x B — O R D E R of t h e
united states District Court
for the Northern District of
California , San Jose Division,
FILED jANUARY 24, 2013 . . . . . . . . . . . . . . . . . . 32a
Appendix c — relevant statutory
provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55a
v
TABLE OF CITED AUTHORITIES
Page
Cases
Batzel v. Smith,
333 F.3d 1018 (9th Cir. 2003) . . . . . . . . . . . . . . . . . . . 20
Cooper v. Schlesinger,
111 U.S. 148 (1884) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Eldred v. Ashcroft,
537 U.S. 186 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
Golan v. Holder,
132 S. Ct. 873 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Jerman v. Carlisle, McNellie, Rini, Kramer
& Ulrich LPA,
559 U.S. 573 (2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Kyle v. Campbell Soup Co.,
28 F.3d 928 (9th Cir. 1994) . . . . . . . . . . . . . . . . . . . . . 23
McIntyre v. Ohio Elections Comm’n,
514 U.S. 334 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
Perfect 10 v. CCBill,
488 F.3d 1102 (9th Cir. 2007) . . . . . . . . . . . . . . . . . . . 20
Religious Technology Center v. Lerma,
908 F. Supp. 1362 (E.D. Va. 1995) . . . . . . . . . . . . . . . 24
vi
Cited Authorities
Page
Rossi v. Motion Picture Ass’n of Am. Inc.,
391 F.3d 1000 (9th Cir. 2004) . . . . . . . . . . . . . . . passim
Viacom Int’l, Inc. v. YouTube, Inc.,
676 F.3d 19 (2d Cir. 2012) . . . . . . . . . . . . . . . . . . . . . . . 5
Zaldivar v. City of Los Angeles,
780 F.2d 823 (9th Cir. 1986) . . . . . . . . . . . . . . . . . . . . 23
Statutes
17 U.S.C. § 106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
17 U.S.C. § 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4, 5, 6
17 U.S.C. § 512 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Legislative Materials
144 Cong. Rec. H10618 (daily ed. Oct. 12, 1998) . . . . . . . 8
S. Rep. No. 105-190 (1998) . . . . . . . . . . . . . . . . . . . 8, 12, 22
Other Authorities
Adam Eakman, Note, The Future of the Digital
Millennium Copyright Act, 48 Ind. L. Rev.
631 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
vii
Cited Authorities
Page
Becca Mills, Independent Publishing and DMCA
Abuse, or “How a Scammer Got My Book
Blocked with Very Little Effort,” The Active
Voice (March 1, 2015) . . . . . . . . . . . . . . . . . . . . . . . . . 21
Brief of Amici Curiae Automattic, Inc. et al.
Supporting Appellee/Cross-Appellant’s
Petition for Rehearing En Banc or Panel
Rehearing at 1-2, Lenz v. Universal Music
Corp., 815 F.3d 1145 (9th Cir. 2016)
(No. 13-16106) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Comments of Etsy, Foursquare, Kickstarter,
Meetup and Shapeways, In the Matter of
Section 512 Study, Docket No. USCO-2015-7,
Before the United States Copyright Office
Washington, D.C. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
Comments of the Automattic, Inc., In the Matter
of Section 512 Study, Docket No. USCO-20157, Before the United States Copyright Office
Washington, D.C. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
Comments of the Computer & Communications
Industry Association, 512 Study, Docket No.
USCO-2015-7, Before the United States
Copyright Office Washington, D.C. . . . . . . . . . . . . . 19
viii
Cited Authorities
Page
Comments of the Internet Association, In re:
Section 512 Study: Notice and Request for
Public Comment Docket No. USCO-2015-7,
Before the United States Copyright Office
Washington, D.C. . . . . . . . . . . . . . . . . . . . . . . . . . . 9, 11
Copyright Removal Requests – Google
Transparency Report, Google.com . . . . . . . . . . . . . 13
Corynne McSherry, For Shame: Gannett Abuses
DMCA to Take Down Political
Speech, EFF DeepLinks Blog (Oct. 10, 2014) . . . . . 16
Ctr. for Democracy & Tech., Campaign
Takedown Troubles: How Meritless
Copyright Claims Threaten Online Political
Speech (Sept. 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Daniel Seng, ‘Who Watches the Watchmen?’ An
Empirical Analysis of Errors in DMCA
Takedown Notices (Jan. 23, 2015) . . . . . . . . . . . . . . . 14
Derek Khanna, Reflection on the House
Republican Study Committee Copyright
Report, 32 Cardozo Arts &
Ent. L.J. 11 (2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
Frederick W. Mostert & Martin B. Schwimmer,
Notice and Takedown for Trademarks,
101 Trademark Rep. 249 (2011) . . . . . . . . . . . . . . . . . 25
ix
Cited Authorities
Page
Geogi Kantchev, Twitter Deletes Oil-Data Tweets
Following Industry Complaints, Wall St. J.
(May 9, 2016) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Ian Rubenstrunk, The Throw Down over
Takedowns: An Analysis of the Lenz
Interpretation of 17 U.S.C. S 512(f), 10 J.
Marshall Rev. Intell. Prop. L. 792 (2011) . . . . . . . . . 27
James Ball & Paul Hamilos, Ecuador’s President
Used Millions of Dollars of Public Funds to
Censor Critical Online Videos,
BuzzFeedNews (Sept. 24, 2015) . . . . . . . . . . . . . . . . 16
Jennifer M. Urban, Joe Karaganis & Brianna L.
Schofield, Notice and Takedown in Everyday
Practice (March 29, 2016) . . . . . . . . . . . . . . . . . . . . . 14
Jennifer Urban & Laura Quilter, Efficient
Process or “Chilling Effects?” Takedown
Notices Under Section 512 of the Digital
Millennium Copyright Act, 22 Santa Clara
Computer & High Tech L.J. 621 (2006) . . . . . . . . . . 13
Jonathan McIntosh, Buffy vs. Edward Remix
Unfairly Removed by Lionsgate, Pop Culture
Detective Agency (Jan. 9, 2013) . . . . . . . . . . . . . . . 16-17
Kevin Donovan, The IOC Joins the DMCA
Censorship Club, Techdirt (Aug. 14, 2008) . . . . . . . 15
x
Cited Authorities
Page
Lydia Pallas Loren, Deterring Abuse of the
Copyright Takedown Regime by Taking
Misrepresentation Claims Seriously,
46 Wake Forest L. Rev. 745 (2011) . . . . . . . . . . . 24, 27
Michael B. Farrell, Online Lecture Prompts
Legal Fight on Copyright,
Boston Globe (Aug. 26, 2013) . . . . . . . . . . . . . . . . . . . 17
Michael Masnick, et al., The Sky is Rising 2014
ed., Computer & Communications Industry
Association (Oct. 23, 2014) . . . . . . . . . . . . . . . . . . . . . 11
Mike Masnick, Larry Lessig Threatened With
Copyright Infringement Over Clear Fair Use;
Decides To Fight Back, Techdirt
(Aug. 23, 2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Mitch Stoltz, Using Copyright to Silence Oil
Sands Satire? How Crude., EFF
DeepLinks Blog (Aug. 20, 2013) . . . . . . . . . . . . . . . . 18
Myles Power, Fourth DMCA Filed Against Me,
Myles Power – Fun With SCIENCE!
(February 26, 2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Myles Power, The DMCA Situation, Myles Power
– Fun With SCIENCE! (Feb. 9, 2014) . . . . . . . . . . . 14
Nate Anderson, What Fair Use? Three Strikes
and You’re Out . . . of YouTube, Ars Technica
(Jan. 15, 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
xi
Cited Authorities
Page
Recent Case, Lenz v. Universal Music Corp.,
129 Harv. L. Rev. 2289 (June 10, 2016) . . . . . . . . . . . 25
Rossi v. Motion Picture Ass’n of America, Inc.,
Pet. for Writ of Cert., 2005 WL 510720
(Feb. 28, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
Rush Limbaugh Demands YouTube Remove
Daily Kos Video . . . Watch It Here, Daily Kos
(Apr. 23, 2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Stephanie Condon, Olympic Committee Rethinks
Copyright Infringement Claim on YouTube,
CNET (Aug. 15, 2008) . . . . . . . . . . . . . . . . . . . . . . . . 15
Timothy B. Lee, Music Publisher Uses DMCA to
Take Down Romney Ad of Obama Crooning,
Ars Technica (July 16, 2012) . . . . . . . . . . . . . . . . . . . 17
1
PETITION FOR WRIT OF CERTIORARI
The digital age has fostered an explosion of speech
and creativity, much of it from people that never before
had access to a megaphone, let alone a digital megaphone
that can reach millions. The holding below renders that
creativity uniquely vulnerable to extra-judicial censorship.
The cr u x of the problem is this: most online
expression—political commentary, artistic works, scientific
research, music, even gossip—depends on intermediaries
(like YouTube or Facebook) to reach an audience. Those
service providers rely, in turn, on the Digital Millennium
Copyright Act (“DMCA”) safe harbors, 17 U.S.C. § 512(a)(d), which grant those intermediaries immunity from
secondary copyright liability if they expeditiously remove
material that a private party asserts infringes copyright
(via a “takedown” notice) and terminate the accounts of
“repeat infringers.” That immunity is a powerful incentive
to take offline any content alleged to be infringing, without
further investigation, and to shut down the accounts of
users who are repeatedly accused of infringement.
Recognizing the risks this “notice and takedown”
regime could pose for lawful speech, Congress required
copyright holders to allege infringement by specifically
attesting that they have formed a “good faith belief” that
the use in question is not authorized “by the owner, its
agent or the law.” 17 U.S.C. § 512(c). And Congress created
a cause of action, Section 512(f), which allows those injured
by false allegations to hold their accusers accountable.
2
The Ninth Circuit has rendered those safeguards all
but meaningless. It held that a copyright holder cannot be
held liable for causing the takedown of lawful content as
long as it subjectively believes the material is infringing—
no matter how unreasonable that belief may be.
Left undisturbed, the ruling in this case gives a free
pass to the censorship of online speech, particularly fair
uses. An author could cause a hosting service to take a
critical review offline, without fear of consequence, if she
held the mistaken view that the reviewer’s use of a quote
was unlawful. A political candidate who thought using an
excerpt of her speech in a series of videos was necessarily
infringing could flood her opponent’s YouTube channel
with takedown notices and cause it to be taken offline
altogether in the middle of an election season, again
without consequence. As the dissent put it:
The majority’s unfortunate interpretation
. . . eviscerates § 512(f) and leaves it toothless
against frivolous takedown notices. And, in
an era when a significant proportion of media
distribution and consumption takes place on
third-party safe harbors such as YouTube, if
a creative work can be taken down without
meaningfully considering fair use, then the
viability of the concept of fair use itself is in
jeopardy. Such a construction of § 512(f) cannot
comport with the intention of Congress.
Pet. App. 30-31. (footnote omitted) (emphasis added).
Indeed, under this reading, even the most specious and
bizarre belief—e.g., a belief that copyright has been
infringed based on information provided by a fortune
3
teller—could pass muster, as long as that belief is
sincerely held.
Abuse of the notice and takedown system is welldocumented. The decision below effectively eliminates
the best means of deterring such abuse and deprives
victims of their only meaningful recourse. What is worse,
the decision puts the DMCA in conflict with the First
Amendment. As the Court has held, fair use is essential
to maintaining the balance between copyright and free
speech. Golan v. Holder, 132 S. Ct. 873, 890 (2012) (fair
use is a “built-in First Amendment accommodation[]”).
The decision below undermines that balance by allowing
private parties to do what no court could: Silence lawful
expression, temporarily or permanently, based on nothing
more than a legally baseless allegation. Online fair uses
become second-class speech that, unlike offline fair uses,
can be easily restrained without meaningful remedy.
This is not what Congress intended. Given the
importance of the safe harbors to Internet speech, it is
equally important that courts correctly interpret the
statutory protections Congress put in place to protect
that speech. Petitioner asks the Court to grant certiorari
to determine, once and for all, whether or not the DMCA
includes meaningful protections for online fair uses—a
vast and growing area of creativity and expression.
OPINIONS BELOW
The opinion of the United States Court of Appeals for
the Ninth Circuit (Pet. App. 1-31) is published at 815 F.3d
1145. The opinion of the United States District Court for
the Northern District of California (Pet. App. 32-54) is
published at 2013 WL 271673.
4
JURISDICTION
The amended judgment of the court of appeals was
entered on March 17, 2016. On May 20, 2016 Justice
Anthony Kennedy extended the time to file this Petition
until August 12, 2016. This Court has jurisdiction pursuant
to 28 U.S.C. § 1254(1).
RELEVANT STATUTORY PROVISIONS
“Any person who knowingly materially misrepresents”
under Section 512 of the Digital Millennium Copyright Act
“that material or activity is infringing” can be sued for
damages. 17 U.S.C. § 512(f). To represent infringement
under Section 512, a person must make “[a] statement
that the complaining party has a good faith belief that
use of the material in the manner complained of is not
authorized by the copyright owner, its agent, or the law.”
Id § 512(c)(3)(A)(v).
These and other relevant portions of the Copyright
Act, 17 U.S.C. §§ 106, 107 and 512, are reproduced at Pet.
App. 55-63.
Statement of the case
I. Factual BACKGROUND
In 2007, Stephanie Lenz posted a 29-second home
video of her two young children dancing in her kitchen to
the Prince song Let’s Go Crazy. Pet. App. 3-4. Universal,
acting on Prince’s behalf, sent YouTube a notice claiming
that hundreds of videos posted on YouTube, including
the video posted by Ms. Lenz, infringed copyrights in
5
Prince’s musical compositions. In that notice, Universal
stated that it had a good faith belief that the videos were
not authorized by Prince, his agent, or the law. Pet. App. 5.
Universal included these videos in its notice based
on its general guidelines: “[W]hen a writer is upset
or requests that particular videos be removed from
YouTube” Universal would “review the video to ensure
that the composition was the focus of the video and if
it was we then notify YouTube that the video should be
removed.” Pet. App. 43. Those guidelines did not mention
the doctrine of fair use. 17 U.S.C. § 107; Pet. App. 43.
Consistent with those guidelines, Sean Johnson, the
Universal employee tasked with reviewing the videos, “put
a video on the list [of videos that Universal would demand
that YouTube remove] that embodied a Prince composition
in some way if the—there was a significant use of it, of
the composition, specifically if the song was recognizable,
was in a significant portion of the video or was the focus
of the video.” Pet. App. 42. Johnson would not include a
video on the takedown list if it had only “a second or less
of a Prince song, literally a one line, half line of a Prince
song,” or if it was shot in a noisy environment like a bar
where the song was playing “deep in the background.”
Pet. App. 42-43. Johnson made no mention of fair use
during his testimony. And Universal admitted that it had
not instructed Johnson to consider fair use. Pet. App. 43.
In response, YouTube took down Ms. Lenz’s video,
thereby retaining the protection of the DMCA safe harbor
for Internet hosts, 17 U.S.C. § 512(c). Pet. App. 34; cf.
Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 27 (2d
Cir. 2012). Six weeks later, YouTube restored the video
6
after Ms. Lenz submitted a counter-notice, following the
procedures set forth in the DMCA. Pet. App. 34; 17 U.S.C.
§ 512(g).
II. PROCEDURAL BACKGROUND
Ms. Lenz sued Universal for falsely representing
that her video infringed a Prince copyright. Pet. App. 6;
17 U.S.C. § 512(f). Lenz moved for summary judgment
of liability, arguing that Universal’s representation to
YouTube that it had a good faith belief that her video was
not authorized by the law was necessarily false, because
Universal did not consider whether her video was a fair
use under 17 U.S.C. § 107. Pet. App. 45. Universal opposed,
arguing that it was not required to consider fair use at
all. Pet. App. 12. In the alternative, it argued that its
consideration of whether Let’s Go Crazy was the “focus” of
Ms. Lenz’s video was sufficient to form a subjective belief
that the video was not a fair use. Pet. App. 16.
The court of appeals agreed with Ms. Lenz that a fair
use is a use that is authorized by the law, that the sender of
a DMCA takedown notice must consider whether the use in
question is a fair use, and that Universal’s representation
that Ms. Lenz’s video was not authorized by the law was a
representation that Universal had a good faith belief that
the video was not a fair use. Pet. App. 14. Nonetheless,
the majority held that a jury could find—as a factual
matter—that Universal’s procedures were “tantamount”
to a consideration of fair use that was “sufficient to form
a subjective good faith belief about the video’s fair use or
lack thereof.” Pet. App. 16.
7
The majority rejected Ms. Lenz’s argument that an
unreasonably held belief cannot be a good faith belief,
relying on its prior decision in Rossi v. Motion Picture
Ass’n of Am. Inc., 391 F.3d 1000 (9th Cir. 2004). Pet.
App. 15-16. In Rossi, the court of appeals had held that
“the ‘good faith belief’ requirement in § 512(c)(3)(A)(v)
encompasses a subjective, rather than objective standard.”
Rossi, 391 F.3d at 1004.
Judge Milan Smith dissented, concluding that Rossi
“did not abrogate the statutory requirement that the belief
[that a use is not authorized by law] be held in good faith.”
Pet. App. 30. The dissent would have held that “a belief
in infringement formed consciously without considering
fair use is no good-faith belief at all.” Id. (citing Cooper v.
Schlesinger, 111 U.S. 148, 155 (1884)). “And to assert in
good faith that a use is not fair, a party must consider the
statutory elements of fair use set forth in § 107. Merely
evaluating whether a use is ‘significant’ is not enough.”
Id. Accordingly, the dissent would have found Universal
liable as a matter of law.
REASONS FOR GRANTING THE PETITION
The Court should grant the petition because (I) the
proper interpretation of the DMCA’s takedown provisions
is a matter of national importance; (II) the decision below
contravenes Congress’s intent to prevent abuse of the
DMCA notice and takedown system and disturbs the
traditional contours of copyright law by rendering online
fair use uniquely vulnerable to private censorship; and
(III) this case presents an ideal vehicle to consider this
matter of national importance.
8
I. PROPER INTERPRETATION OF THE DMCA
NOTICE AND TAKEDOWN PROVISIONS IS AN
ISSUE OF NATIONAL IMPORTANCE
Section 512 of the DMCA has been central to the
emergence of the Internet as a platform for speech and
commerce. Congress realized that establishing clear
rules regarding intermediary liability was essential to
the development of the Internet as a vehicle for free
expression, innovation, and commerce. Accordingly,
Congress designed Section 512 “to clarify the liability
for copyright infringement of online and Internet service
providers . . . [by setting] forth ‘safe harbors’ from liability
for ISP’s and OSP’s under clearly defined circumstances,
which both encourage responsible behavior and protect
important intellectual property rights.” S. Rep. No. 105190, at 67 (1998) (additional views of Sen. Patrick Leahy,
Member, S. Comm. on the Judiciary).
In a nutshell, the statute replaced the murky, judgemade standards that characterize copyright’s secondary
liability doctrines with detailed, relatively predictable
rules. So long as their activities fall within one of the
four safe harbors, service providers may “opt in” to this
alternate, more definite, set of rules by meeting specific
statutory prerequisites. Copyright owners, for their
part, were given an expedited, extra-judicial “noticeand-takedown” procedure for obtaining redress against
alleged infringement.
Congress also knew that online intellectual property
enforcement should not come at the expense of stifling
lawful speech. 144 Cong. Rec. H10618 (daily ed. Oct.
12, 1998) (Rep. Barney Frank stating, “[W]e want to
9
protect intellectual property rights but not interfere with
freedom of expression.”). Service providers have powerful
incentives to comply with takedown notices because, as
the Internet Association put it: “The cost of failure to
comply is too great a risk for Internet companies; it would
threaten the very existence of Internet platforms.”1
Thus, Congress put in place a series of safeguards to
help limit and deter abuse of the DMCA’s extrajudicial
takedown process. The first was the requirement that a
Section 512 takedown notice must include “[a] statement
that the complaining party has a good faith belief that
use of the material in the manner complained of is not
authorized by the copyright owner, its agent, or the law.”
17 U.S.C. § 512(c)(3)(A)(v).
That requirement works in tandem with a second
safeguard: Section 512(f), which creates a cause of action
for those damaged by false takedown notices:
(f) Misrepresentations.—Any person who knowingly
materially misrepresents under this section—
(1) that material or activity is infringing, or
(2) that material or activity was removed or
disabled by mistake or misidentification,
1. Comments of the Internet Association at 5, In re: Section
512 Study: Notice and Request for Public Comment Docket
No. USCO-2015-7, Before the United States Copyright Office
Washington, D.C., https://internetassociation.org/wp-content/
uploads/2016/03/Internet-Association-Comments-on-Section-512Study-4-1-16.pdf.
10
shall be liable for any damages, including
costs and attorneys’ fees, incurred by the
alleged infringer, by any copyright owner
or copyright owner’s authorized licensee, or
by a service provider, who is injured by such
misrepresentation, as the result of the service
provider relying upon such misrepresentation
in removing or disabling access to the material
or activity claimed to be infringing, or in
replacing the removed material or ceasing to
disable access to it.
17 U.S.C. § 512(f). The phrase “misrepresents under this
section” includes a misrepresentation that one has formed
the good faith belief required under Section 512(c).
Section 512 thus embodies a carefully crafted system
that, when properly deployed, gives service providers
protection from liability, copyright owners tools to police
infringement, and users the ability to challenge the
improper use of those tools. Thanks to that system, the
Internet has become the most revolutionary platform for
the creation and dissemination of speech that the world
has ever known. Thousands of companies, big and small,
rely on it every day, including interactive platforms like
video hosting services and social networking sites that
have become vital not only to democratic participation but
also to the ability of ordinary users to forge communities,
access information instantly, and discuss issues of public
and private concern. Political candidates, their supporters,
and the journalists who cover them, take full advantage of
these platforms to communicate with voters and spread
their political message. Citizens themselves join in, able to
speak out to more people, in more ways, than ever before.
11
Indeed, with the help of online service providers like
Wikipedia, the Internet Archive, WordPress, Tumblr,
Google, YouTube, Twitter, Facebook, and many others,
individuals with little technical knowledge or money can
today find, create, reproduce, disseminate, and respond
to content, interacting with a global audience. In 2015,
WordPress.com alone hosted 70 million individual blogs,
Tumblr was home to 260 million blogs, and Twitter
had 320 million monthly active users. 2 Many of those
individuals use those platforms simply to share their
ideas and creative works, while others take advantage of
these new platforms to grow new businesses. The result
has been an explosion of new economic growth. 3 And
the service providers that enable (and benefit from) that
growth agree: the DMCA safe harbors are essential to
their very existence.4
2. See Brief of Amici Curiae Automattic, Inc. et al.
Supporting Appellee/Cross-Appellant’s Petition for Rehearing En
Banc or Panel Rehearing at 1-2, Lenz v. Universal Music Corp.,
815 F.3d 1145 (9th Cir. 2016) (No. 13-16106).
3. See generally Michael Masnick, et al., The Sky is Rising
2014 ed., Computer & Communications Industry Association (Oct.
23, 2014), https://www.ccianet.org/wp-content/uploads/2014/10/
Sky-Is-Rising-2014.pdf.
4. See, e.g., Comments of the Internet Association at 1-2, In
re: Section 512 Study: Notice and Request for Public Comment
Docket No. USCO-2015-7, Before the United States Copyright
Office Washington, D.C. (“Internet Association member companies
depend on the certainty and clarity in Section 512 to provide users
and creators access to a broad diversity of content available on a
variety of platforms.”), at https://internetassociation.org/wp-content/
uploads/2016/03/Internet-Association-Comments-on-Section-512Study-4-1-16.pdf.
12
It is not too much to say that the DMCA safe harbors
unleashed the modern Internet—precisely as Congress
intended. But it is also clear that Congress intended
to balance “the need for rapid response to potential
infringement with the end-users[’] legitimate interests in
not having material removed without recourse.” S. Rep.
105-190, at 21 (1998). Given the extraordinary reach of the
DMCA, it is crucial to get that balance right.
II. BY UNDERMINING LEGAL PROTECTIONS FOR
ONLINE FAIR USES, THE DECISION BELOW
THWARTS CONGRESSIONAL INTENT AND
RESHAPES THE CONTOURS OF COPYRIGHT
LAW
As explained above, a copyright holder that sends a
DMCA takedown notice must affirm in that notice that
it has a good faith belief that the material it is targeting
infringes copyright, and faces liability if that affirmation
is false. In the case at bar, Universal contends that its
subjective belief that Ms. Lenz’s use of Let’s Go Crazy was
not authorized by the law because its employee formed
the opinion that the Prince composition was “the focus”
of Ms. Lenz’s video. Ms. Lenz contends that her use was a
fair use, and that a belief to the contrary—and certainly a
belief formed without consideration of the actual statutory
fair use factors—is unreasonable, and therefore cannot
be a belief held in good faith.
The court of appeals majority held, instead, that any
belief in infringement that is subjectively held is a “good
faith” belief. Pet. App. 15-16. That conclusion cannot be
squared with the language, spirit, or legislative intent of
the DMCA. Worse still, it puts the DMCA in conflict with
13
the First Amendment by undermining fair use protections
for online speech.
A. The Decision Undermines Crucial Protections
for Online Speech.
Certiorari should be granted so that the Court can
consider whether Congress intended to allow private
parties to cause the removal of online speech based even
on unreasonable beliefs.
1.
DMCA Abuse Is Common.
Given the incentives of the DMCA safe harbors,
intermediaries will usually respond to a DMCA takedown
notice by quickly removing the challenged content. Thus,
by simply sending an email or filling out a webform, a
copyright owner, or indeed anyone who wishes to remove
speech from the Internet, for whatever reason, can do so.
Copyright ow ners take full advantage of this
extraordinary power, sending millions of takedown
notices each month. 5 Most of these notices are legitimate.
Many, however, are not. Study after study has found
that a significant percentage of takedown notices have
fundamental flaws.6 A recent study by researchers at the
5. See, e.g., Copyr ight Removal Requests – Google
Transparency Report, Google.com, http://www.google.com/
transparencyreport/removals/copyright/ (last visited Aug. 9, 2016).
6. See e.g., Jennifer Urban & Laura Quilter, Efficient Process
or “Chilling Effects?” Takedown Notices Under Section 512 of the
Digital Millennium Copyright Act, 22 Santa Clara Computer &
High Tech L.J. 621, 668 (2006) (31% of notices raised “significant
14
University of California at Berkeley, for example, found
that 28.4% of takedown demands “had characteristics that
raised clear questions about their validity, based solely on
a facial review.” 7
These improper takedowns cause significant harm to
lawful speech. For example, a group of so-called “AIDS
denialists” (people who do not believe HIV causes AIDS)
used the DMCA to cause YouTube to take down a series of
videos debunking their claims, simply because the videos
used short clips of the denialists’ own public commentary. 8
As a result, the videos were taken offline even though no
person could reasonably have concluded that the videos
were unlawful.
questions related to the underlying copyright claim, including fair
use defenses, other substantive defenses, very thin copyright, or
non-copyrightable subject matter.”); Daniel Seng, ‘Who Watches
the Watchmen?’ An Empirical Analysis of Errors in DMCA
Takedown Notices, 45 (Jan. 23, 2015), http://papers.ssrn.com/sol3/
papers.cfm?abstract_id=2563202 (8.3% or takedown demands
didn’t comply with statutory requirements and 1.3%, or about
800,000 notices, were substantively improper).
7. Jennifer M. Urban, Joe Karaganis & Brianna L. Schofield,
Notice and Takedown in Everyday Practice, 88 (March 29, 2016),
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2755628
(analyzing over 100 million takedown notices).
8. See Myles Power, The DMCA Situation, Myles Power
– Fun With SCIENCE! (Feb. 9, 2014), https://mylespower.
co.uk/2014/02/09/the-dmca-situation/; see also Myles Power, Fourth
DMCA Filed Against Me, Myles Power – Fun With SCIENCE!
(February 26, 2014), https://mylespower.co.uk/2014/02/14/fourthdmca-filed-against-me/.
15
Further examples abound:
• An oil industry group used the DMCA to prevent
traders from sharing price data on Twitter. 9
• In the first few days of the 2008 Winter Olympics
in China, the International Olympic Committee sent
a DMCA takedown notification targeting a video
of a demonstration by Students for a Free Tibet,
because the video included an image of the famous
Olympic rings.10
• Takedowns in the midst of political campaigns have
become common. For example, news organizations
have repeatedly used the DMCA takedown process
to target political ads that contain clips of news
broadcasts as part of their commentary.11
9. Geogi Kantchev, Twitter Deletes Oil-Data Tweets
Following Industry Complaints, Wall St. J.( May 9, 2016), http://
www.wsj.com/articles/twitter-deletes-oil-data-tweets-followingindustry-complaints-1457566322.
10. Kevin Donovan, The IOC Joins the DMCA Censorship
Club, Techdirt, (Aug. 14, 2008) https://w w w.techdirt.com/
articles/20080812/1245391959.shtml, Stephanie Condon, Olympic
Committee Rethinks Copyright Infringement Claim on YouTube,
CNET (Aug. 15, 2008), http://w w w.cnet.com/news/olympiccommittee-rethinks-copyright-infringement-claim-on-youtube/.
11. See Ctr. for Democracy & Tech., Campaign Takedown
Troubles: How Meritless Copyright Claims Threaten Online
Political Speech (Sept. 2010), https://www.cdt.org/files/pdfs/
copyright_takedowns.pdf.
16
• Journalists uncovered a well-funded and sustained
campaign by the government of Ecuador to abuse
the DMCA to silence criticism of President Rafael
Correa.12
• The Kentucky Cour ier-Jour nal’s editor ial
board interviewed a Democratic candidate for
Senate, Alison Lundergan Grimes, and streamed
the inter view live. That stream included 40
uncomfortable seconds of the candidate apparently
trying to avoid admitting she voted for President
Obama. A critic posted a video clip of those 40
seconds online. The newspaper’s parent company
promptly sent a takedown notice that forced the
video offline.13
• Artist Jonathan McIntosh found his remix video
Buffy vs. Edward: Twilight Remixed—which was
mentioned by name in official recommendations
from the U.S. Copyright Office regarding DMCA
exemptions for transformative noncommercial video
works—subject to a DMCA takedown notice.14 It
12. James Ball & Paul Hamilos, Ecuador’s President Used
Millions of Dollars of Public Funds to Censor Critical Online
Videos, BuzzFeedNews (Sept. 24, 2015), www.buzzfeed.com/
jamesball/ecuadors-president-used-millions-of-dollars-of-publicfunds.
13. C or y n ne Mc S he r r y, Fo r Sh a m e:
G a n n e t t Ab u s e s DMC A t o Ta k e D o w n Po li ti c a l
Speech, EFF DeepLinks Blog (Oct. 10, 2014), https://www.eff.
org/deeplinks/2014/10/shame-gannett-abuses-dmca-take-downpolitical-speech.
14. See Jonathan McIntosh, Buffy vs. Edward Remix
Unfairly Removed by Lionsgate, Pop Culture Detective Agency
17
took three months of intense legal wrangling before
Lionsgate finally relinquished its claim.
• An Australian music publisher sent a takedown
notice targeting an entire lecture delivered and
posted by Professor Lawrence Lessig because it
included illustrative clips of a number of videos
set to a piece of music in which the company held
copyright. When Professor Lessig counter-noticed
pursuant to Section 512(g), the publisher, Liberation
Music, threatened to take legal action within 72
hours if Professor Lessig did not withdraw his
counter-notice.15
• BMG Rights Management sent a takedow n
targeting an official Romney campaign ad that
showed President Obama singing a line from the
Al Green song “Let’s Stay Together.”16
(Jan. 9, 2013), http://popculturedetective.agency/2013/buffy-vsedward-remix-unfairly-removed-by-lionsgate.
15. See Michael B. Farrell, Online Lecture Prompts
Legal Fight on Copyright, Boston Globe (Aug. 26, 2013), http://
w w w.bostonglobe.com / business/2 013/0 8/26/ ha r va rd-lawprofessor-sues-record-company-over-phoenix-lisztomania/
jqYkgFaXSgGpd2hL2zsXsK/story.html ; see also Mike Masnick,
Larry Lessig Threatened With Copyright Infringement Over
Clear Fair Use; Decides To Fight Back, Techdirt (Aug. 23, 2013),
https://www.techdirt.com/articles/20130822/22593124287/larrylessig-threatened-with-copyright-infringement-over-clear-fairuse-decides-to-fight-back.shtml.
16. Timothy B. Lee, Music Publisher Uses DMCA to Take
Down Romney Ad of Obama Crooning, Ars Technica (July 16, 2012),
http://arstechnica.com/tech-policy/2012/07/major-label-uses-dmcato-take-down-romney-ad-of-obama-crooning/.
18
• Radio host Rush Limbaugh sent a DMCA notice to
YouTube demanding it take down a seven-minute
montage of Limbaugh’s “most vile smears.”17
• The Alberta tourism bureau, Travel Alberta, sent a
takedown notice targeting a satirical video that used
four seconds of a Travel Alberta advertisement.18
The video was tied to a fundraising campaign by
Andy Cobb and Mike Damanskis, Los Angelesbased satirists who have authored over 100 political
comedy videos.
• Film critic Kevin B. Lee found his entire account
removed from YouTube in response to takedown
notices complaining of clips Lee used in the
criticism he posted there.19
Service providers have also confirmed that unfounded
DMCA notices are both common and burdensome. For
example, Automattic, Inc. which owns WordPress, has
reported that about 10% of the takedown notices it
17. See Rush Limbaugh Demands YouTube Remove Daily
Kos Video . . . Watch It Here, Daily Kos (Apr. 23, 2012), https://
www.dailykos.com/story/2012/4/23/1085791/-Rush-Limbaughdemands-YouTube-remove-Daily-Kos-video-watch-it-here.
18. See Mitch Stoltz, Using Copyright to Silence Oil Sands
Satire? How Crude., EFF DeepLinks Blog (Aug. 20, 2013), https://
w w w.eff.org/deeplinks/2013/08/using-copyright-silence-oilcompany-satire-how-crude.
19. See Nate Anderson, What Fair Use? Three Strikes and
You’re Out . . . of YouTube, Ars Technica (Jan. 15, 2009), http://
arstechnica.com/tech-policy/news/2009/01/what-fair-use-threestrikes-and-youre-out-of-youtube.ars.
19
received in 2014 and 2015, “were directed at clear fair
uses, clearly uncopyrightable content, or contained clear
misrepresentations regarding copyright ownership.” 20 A
group of platforms for online commerce, including Etsy,
reports that they regularly receive DMCA takedown
notices that concern trademark issues, not copyright. 21
These improper notices hurt copyright holders,
service providers and users alike. As the Computer
& Communications Industry Association recently
stated, “Incorrect, incompetent, or incomplete notices,
not to mention willful abuse of the system, occupy a
disproportionate share of DMCA compliance resources
that might otherwise be directed to providing expeditious
service to responsible submitters.” 22
20. Comments of the Automattic, Inc. at 6, In the Matter
of Section 512 Study, Docket No. USCO-2015-7, Before the
United States Copyright Office Washington, D.C., https://assets.
documentcloud.org/documents/2781753/2016-03-31-AutomatticInc-512-NOI-Comments.pdf.
21. Comments of Etsy, Foursquare, Kickstarter, Meetup
and Shapeways at 3-5, In the Matter of Section 512 Study, Docket
No. USCO-2015-7, Before the United States Copyright Office
Washington, D.C., https://extfiles.etsy.com/advocacy/Comment%
20of%20Etsy,%20et%20al%20in%20512%20Study.pdf.
22. Comments of the Computer & Communications Industry
Association at 11, 512 Study, Docket No. USCO-2015-7, Before the
United States Copyright Office Washington, D.C., http://www.
ccianet.org/wp-content/uploads/2016/03/CCIA-Section-512-NoIComments-2016.pdf.
20
2. Congress Intended Section 512(f) To Be a
Meaningful Check on Such Abuse.
As the examples above illustrate, Section 512 can
result in lawful material being taken down from the
Internet, without prior judicial scrutiny or other due
process. But Congress sought to do something very
different: to “carefully balance the First Amendment
rights of users with the rights of a potentially injured
copyright holder.” Batzel v. Smith, 333 F.3d 1018, 1031
n.19 (9th Cir. 2003).
First, as noted above, Congress required that all
representations of infringement under Section 512
include a series of specific items. 17 U.S.C. § 512(c)(3)(A).
Admonishing one copyright owner for its failure to send
a compliant notice, for example, the Ninth Circuit noted:
The DMCA requires a complainant to declare,
under penalty of perjury, that he is authorized
to represent the copyright holder, and that
he has a good-faith belief that the use is
infringing. This requirement is not superfluous.
Accusations of alleged infringement have
drastic consequences: A user could have content
removed, or may have his access terminated
entirely. If the content infringes, justice has
been done. But if it does not, speech protected
under the First Amendment could be removed.
Perfect 10 v. CCBill, 488 F.3d 1102, 1112 (9th Cir. 2007)
(emphasis added).
21
Second, Congress outlined a process for the relatively
speedy restoration of non-infringing content targeted
for takedown, which allows a user to send a counternotification challenging the infringement allegations. 17
U.S.C. § 512(g). The complaining party then has 10-14 days
to bring an infringement lawsuit; if it does not, the service
provider can restore the content without fear of liability.
However, Section 512(g) by itself is not enough to
protect lawful uses. No matter how preposterous the
claim that led to the initial takedown, it can serve as
a temporary restraint on speech, as service providers
are discouraged from restoring targeted speech for a
minimum of ten business days, lest they lose the protection
of the safe harbors. Id. § 512(g)(2)(B). In addition, many
speakers are reluctant to risk the possibility of costly and
time-consuming litigation, even where the challenged
speech is a protected fair use. Further, the counter-notice
procedure offers little protection for anonymous speech,
as it requires the respondent to provide her name and
location. Id. § 512(g)(3)(D). Speakers engaged in critical
political speech or whistleblowing may fear retaliation.
See McIntyre v. Ohio Elections Comm’n, 514 U.S. 334, 357
(1995) (“Anonymity . . . exemplifies the purpose behind the
Bill of Rights and of the First Amendment in particular: to
protect unpopular individuals from retaliation.”). Victims
of harassment may fear disclosing their personal details
to their harasser. 23
23. See Becca Mills, Independent Publishing and DMCA
Abuse, or “How a Scammer Got My Book Blocked with Very Little
Effort,” The Active Voice (March 1, 2015), https://the-active-voice.
com/2015/03/01/nolander-blocked-at-amazon-and-smashwords/.
22
So, third, Congress sought to deter improper claims
by also crafting Section 512(f), to allow lawful users of
copyrighted works to hold copyright owners accountable if
they send a takedown notice without properly considering
whether the use was in fact authorized by the copyright
owner or the law. As the Senate Report on Section 512(f)
explained:
The Committee was acutely concerned that
it provide all end-users . . . with appropriate
procedural protections to ensure that material
is not disabled without proper justification.
S. Rep. No. 105-190, at 21 (1998) (emphasis added).
3. The Decision Below Undermines the Fair
Use Protections Congress Intended.
Taken together, the requirements of Sections 512(c),
(f) and (g) were supposed to serve as safeguards for online
fair use—but the decision below effectively thwarts that
goal. The Ninth Circuit correctly held that the sender
of a takedown notice must come to some conclusion as
to whether the use in question actually violated the law.
But if, as the Ninth Circuit held, any belief to that effect
that is subjectively held can qualify as a “good faith
belief,” no matter how unreasonable it might be, then that
requirement has little meaning.
The origin of this mistaken conclusion can be found in
a prior decision, Rossi v. Motion Picture Ass’n of Am. Inc.,
391 F.3d 1000 (9th Cir. 2004). In Rossi, the Ninth Circuit
held that the “good faith belief” that the DMCA requires
need only be a subjectively held state of mind. See id. at
23
1004. But § 512(c)(3)(A)(v) does not use the bare phrase
“good faith”—it requires a good faith belief. The word
“belief,” on its own, already requires a subjective state of
mind; if any subjectively held viewpoint is a “good faith
belief,” the words “good faith” are superfluous.
The Court should grant certiorari to consider
whether the phrase “good faith belief” in Section 512
instead connotes a subjectively held viewpoint that is also
reasonably held. This interpretation would give meaning
both to “good faith” (meaning “reasonably held, even if
wrong”) and “belief” (meaning “subjectively held state
of mind”). See Zaldivar v. City of Los Angeles, 780 F.
2d 823, 830-31 (9th Cir. 1986) (construing prior version
of Rule 11 of the Federal Rules of Civil Procedure, and
concluding that “[a] good faith belief in the merit of a
legal argument is an objective condition” that “need not
be correct” but that must “be defensible”). This would
mean that a representation of a good faith belief is false
if it is either not subjectively held (there is no “belief”) or
unreasonably held (the belief is not held in “good faith”).
Blessing unreasonable beliefs as a basis for extrajudicial takedowns of online speech contravenes the
long-standing principle that a “mistake of law does not
constitute excusable neglect.” Kyle v. Campbell Soup Co.,
28 F.3d 928, 932 (9th Cir. 1994). Exceptions to this rule
are rare; when Congress intends such exceptions, it must
do so explicitly. See Jerman v. Carlisle, McNellie, Rini,
Kramer & Ulrich LPA, 559 U.S. 573, 583-84 (2010).
By contrast, requiring reasonable legal conclusions,
based on a familiarity with the statutory fair use factors
or other objective indicia of infringement, is consistent
24
with both this longstanding principle and other principles
of copyright law. For example, whether it was reasonable
to sue for copyright infringement bears on deciding
whether a copyright lawsuit was brought in good faith.
See Religious Technology Center v. Lerma, 908 F. Supp.
1362, 1368 (E.D. Va. 1995) (awarding fees because “no
reasonable copyright holder could have in good faith
brought a copyright infringement action”).
As one commentator has noted, “[r]equiring that a
plaintiff may only prove a misrepresentation was made
‘knowingly’ by demonstrating the subjective belief of the
copyright owner not only is inconsistent with the statutory
language, but application of such a standard also would
thwart the purpose of including the misrepresentation
claim within the statutory scheme.” Lydia Pallas Loren,
Deterring Abuse of the Copyright Takedown Regime by
Taking Misrepresentation Claims Seriously, 46 Wake
Forest L. Rev. 745, 774 (2011). By contrast, requiring
reasonable legal determinations puts Section 512(f)’s
protections within practical reach of ordinary users and
helps limit litigation by sensibly reducing the Section
512(f) inquiry in most cases to: (1) what the defendant
reviewed prior to sending a takedown notification; and
(2) whether the defendant’s assertions, based on that
review, were reasonable. It makes sense, as a matter of
law, legislative intent, and good policy.
B. The Decision Undermines Online Fair Use,
Thereby Disturbing the Traditional Contours
of Copyright.
As a cause of action designed to protect users’
speech, Section 512(f) should be construed to ensure that
it actually provides users with the recourse Congress
25
intended. Instead, the decision below will have opposite
effect.
Indeed, the decision below places the burden on the
person whose speech was taken down to prove to a jury
the subjective belief of the censor. That standard will be
all but impossible for most to satisfy. Discovery becomes
a nightmare, fraught with investigations into subjective
beliefs about the law that likely will draw privilege
objections. Small wonder that commenters who have
noted the lack of judgments against copyright owners
under Section 512(f), and the paucity even of monetary
settlements, have concluded that “[t]he problem seems
to be the subjective bad faith standard.” Frederick W.
Mostert & Martin B. Schwimmer, Notice and Takedown
for Trademarks, 101 Trademark Rep. 249, 278-79 (2011).
It gets worse: If the sender of an improper takedown
cannot suffer liability under Section 512(f), no matter how
unreasonable its belief, the Ninth Circuit’s interpretations
effectively eliminates Section 512(f) protections for even
classic fair uses. Many copyright owners unreasonably
believe that virtually all uses of copyrighted works must
be licensed. Fair use exists, in significant part, to ensure
such unreasonable beliefs do not thwart new creativity.
In particular, it protects uses, such as parody and
criticism, that copyright owners are unlikely to license.
Allowing a copyright owner to hide behind unreasonable
beliefs undermines this crucial protection. As a recent
commentator noted, “[s]avvy copyright holders will be
incentivized to implement slipshod, cursory fair use
procedures to avoid liability under § 512(f), thereby
promoting the very kind of abuse the court seeks to stem.”
Recent Case, Lenz v. Universal Music Corp., 129 Harv.
L. Rev. 2289, 2293 (June 10, 2016).
26
As a result, the decision below, while purporting to
defend fair use, in practice concludes that Congress could,
and did, quietly eviscerate the fair use doctrine for online
speech. As this Court has held, Congress has substantial
discretion with respect to copyright, so long as it does
not disturb copyright law’s “built-in First Amendment
accommodations.” Eldred v. Ashcroft, 537 U.S. 186, 219
(2003). If the Ninth Circuit is correct, that is precisely
what Congress did when it enacted Section 512. If someone
publishes a book review that quotes from a book, the
book’s author cannot use copyright law to get it pulled
from the magazine racks because those quotes would be
lawful fair uses. But if the same review is published on
a blog, the author can force the webhost to take it down
within a day, and keep it down for two weeks. Moreover,
the author can do so even if she is no longer the copyright
holder—so long as she subjectively believes herself to hold
a copyright interest.
If Congress had intended that outcome, it is unlikely
that the DMCA would have withstood First Amendment
scrutiny. As the statutory scheme discussed above shows,
however, Congress did not intend such an outcome. This
Court should grant certiorari to consider whether the
Ninth Circuit’s holding is consistent with the traditional
contours of copyright.
III.THIS IS THE RIGHT CASE TO ADDRESS A
QUESTION OF NATIONAL IMPORTANCE.
Because the DMCA impacts a staggering range of
speech, the balance it strikes between the rights and
responsibilities of speakers and copyright holders is a
question of major importance. This case is likely to be
27
the Court’s only meaningful opportunity to address that
question, because the Rossi rule, especially as applied
by the Ninth Circuit in this case, renders Section 512(f)
effectively unavailable to the public.
In addition to setting an improperly high bar for
liability, as discussed above the subjective standard
essentially guarantees that the target of an abusive
takedown notice will be required to litigate through
discovery and trial. Only the rarest case will proceed
so far. Indeed, Rossi is widely credited with rendering
Section 512(f) a dead letter. See Adam Eakman, Note,
The Future of the Digital Millennium Copyright Act, 48
Ind. L. Rev. 631, 649 (2015); Derek Khanna, Reflection
on the House Republican Study Committee Copyright
Report, 32 Cardozo Arts & Ent. L.J. 11, 48-49 (2013)
(subjective standard “effectively impossible” to satisfy);
Ian Rubenstrunk, The Throw Down over Takedowns:
An Analysis of the Lenz Interpretation of 17 U.S.C. S
512(f), 10 J. Marshall Rev. Intell. Prop. L. 792, 809 (2011)
(subjective standard means Section 512(f) provides
“minimal deterrence”); Loren, supra, 46 Wake Forest L.
Rev. at 774.
The Court denied certiorari in Rossi,24 but the
present case is a far better vehicle for considering what
“good faith belief” means in the DMCA. Michael Rossi
ran a website that promised “Full Length Downloadable
Movies” to anyone who paid a monthly subscription fee.
391 F.3d at 1002. Seeing this claim, the MPAA concluded
Rossi was infringing its members’ copyrights and sent
24. Rossi v. Motion Picture Ass’n of Am., Inc., 544 U.S.
1018 (2005), see also Rossi v. Motion Picture Ass’n of America,
Inc., Pet. for Writ of Cert., 2005 WL 510720 at *I (Feb. 28, 2005).
28
a DMCA takedown notice. Id. at 1002-03. But Rossi was
lying—subscribers to his site were not able to download
movies at all. Id. at 1003. As the Rossi panel recognized,
“[t]he unequivocal language used by Rossi not only
suggest[ed]” infringement, it “virtually compel[led]” that
conclusion. Id. at 1005. Thus, on the facts of that case,
it made no difference whether an unreasonable belief
could be a “good faith” belief, because there was nothing
unreasonable about the MPAA taking Rossi’s words at
face value, instead of continuing to investigate.
This case, in contrast, provides an excellent vehicle
for considering whether the “good faith belief” standard
is an objective or subjective test. It presents the question
squarely, based on a detailed factual record. As the
dissent below noted, the facts regarding the takedown
are essentially undisputed. See Pet. App. at 28-29. Given
the importance of this case for online speech, and the
likelihood that the questions it raises will not reach this
Court again unless Rossi’s error is corrected, the Court
should grant certiorari.
29
CONCLUSION
The petition for a writ of certiorari should be granted.
Date: August 12, 2016
Respectfully Submitted,
A shok Ramani
Michael S. Kwun
Keker & Van Nest
633 Battery Street
San Francisco, CA 94111
(415) 391-5400
*Counsel of Record
Cindy Cohn
Corynne McSherry*
Daniel K. Nazer
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
[email protected]
Attorneys for Petitioner
APPENDIX
1a
Appendix A —Appendix
ORDER A
AND AMENDED
opinion of the UNITED STATES COURT OF
APPEALS FOR THE NINTH CIRCUIT, FILED
March 17, 2016
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
Nos. 13-16106, 13-16107
D.C. No. 5:07-cv-03783-JF
STEPHANIE LENZ,
Plaintiff-Appellee/Cross-Appellant,
v.
UNIVERSAL MUSIC CORP.; UNIVERSAL
MUSIC PUBLISHING INC.; UNIVERSAL MUSIC
PUBLISHING GROUP INC.,
Defendants-Appellants/Cross-Appellees.
Appeal from the United States District Court for the
Northern District of California.
Jeremy D. Fogel, District Judge, Presiding.
Argued and Submitted
July 7, 2015—San Francisco, California
Filed September 14, 2015
Amended March 17, 2016
2a
Appendix A
ORDER AND AMENDED OPINION
Before: Richard C. Tallman, Milan D. Smith, Jr.,
and Mary H. Murguia, Circuit Judges.
Order;
Opinion by Judge Tallman;
Partial Concurrence and Partial Dissent by Judge
Milan D. Smith, Jr.
ORDER
The opinion and dissent filed on September 14, 2015
and published at 801 F.3d 1126 are hereby amended. The
amended opinion and dissent are filed concurrently with
this order.
With these amendments, the panel has voted to
deny Universal’s petition for panel rehearing and Lenz’s
petition for panel rehearing. Judge Tallman and Judge
Murguia have voted to deny Lenz’s petition for rehearing
en banc, and Judge M. Smith has voted to grant Lenz’s
petition for rehearing en banc.
The full court has been advised of the petition for
rehearing en banc. No judge has requested a vote on
whether to rehear the matter en banc. Fed. R. App. P.
35(b).
Universal’s petition for panel rehearing is DENIED.
Lenz’s petition for panel rehearing or rehearing en banc
is DENIED. No future petitions for panel rehearing or
petitions for rehearing en banc will be entertained.
3a
Appendix A
TALLMAN, Circuit Judge:
Stephanie Lenz filed suit under 17 U.S.C. § 512(f)—
part of the Digital Millennium Copyright Act (“DMCA”)—
against Universal Music Corp., Universal Music Publishing,
Inc., and Universal Music Publishing Group (collectively
“Universal”). She alleges Universal misrepresented in
a takedown notification that her 29-second home video
(the “video”) constituted an infringing use of a portion
of a composition by the Artist known as Prince, which
Universal insists was unauthorized by the law. Her claim
boils down to a question of whether copyright holders
have been abusing the extrajudicial takedown procedures
provided for in the DMCA by declining to first evaluate
whether the content qualifies as fair use. We hold that the
statute requires copyright holders to consider fair use
before sending a takedown notification, and that failure
to do so raises a triable issue as to whether the copyright
holder formed a subjective good faith belief that the use
was not authorized by law. We affirm the denial of the
parties’ cross-motions for summary judgment.
I
Founded in May 2005, YouTube (now owned by Google)
operates a website that hosts user-generated content.
About YouTube, YouTube.com, https://www.youtube.com/
yt/about/ (last visited September 4, 2015). Users upload
videos directly to the website. Id. On February 7, 2007,
Lenz uploaded to YouTube a 29-second home video of
her two young children in the family kitchen dancing to
4a
Appendix A
the song Let’s Go Crazy by Prince.1 Available at https://
www.youtube.com/watch?v=N1KfJHFWlhQ (last visited
September 4, 2015). She titled the video “’Let’s Go Crazy’
#1.” About four seconds into the video, Lenz asks her
thirteen month-old son “what do you think of the music?”
after which he bobs up and down while holding a push toy.
At the time Lenz posted the video, Universal was
Prince’s publishing administrator responsible for
enforcing his copyrights. To accomplish this objective
with respect to YouTube, Robert Allen, Universal’s head
of business affairs, assigned Sean Johnson, an assistant
in the legal department, to monitor YouTube on a daily
basis. Johnson searched YouTube for Prince’s songs
and reviewed the video postings returned by his online
search query. When reviewing such videos, he evaluated
whether they “embodied a Prince composition” by making
“significant use of . . . the composition, specifically if the
song was recognizable, was in a significant portion of the
video or was the focus of the video.” According to Allen,
“[t]he general guidelines are that . . . we review the video
to ensure that the composition was the focus and if it was
we then notify YouTube that the video should be removed.”
Johnson contrasted videos that met this criteria to
those “that may have had a second or less of a Prince
song, literally a one line, half line of Prince song” or
1. YouTube is a for-profit company that generates revenues by
selling advertising. If users choose to become “content partners”
with YouTube, they share in a portion of the advertising revenue
generated. Lenz is not a content partner and no advertisements
appear next to the video.
5a
Appendix A
“were shot in incredibly noisy environments, such as
bars, where there could be a Prince song playing deep in
the background . . . to the point where if there was any
Prince composition embodied . . . in those videos that it
was distorted beyond reasonable recognition.” None of the
video evaluation guidelines explicitly include consideration
of the fair use doctrine.
When Johnson reviewed Lenz’s video, he recognized
Let’s Go Crazy immediately. He noted that it played loudly
in the background throughout the entire video. Based on
these details, the video’s title, and Lenz’s query during
the video asking if her son liked the song, he concluded
that Prince’s song “was very much the focus of the video.”
As a result, Johnson decided the video should be included
in a takedown notification sent to YouTube that listed
more than 200 YouTube videos Universal believed to be
making unauthorized use of Prince’s songs. 2 The notice
included a “good faith belief” statement as required by
17 U.S.C. § 512(c)(3)(A)(v): “We have a good faith belief
that the above-described activity is not authorized by the
copyright owner, its agent, or the law.”
After receiving the takedown notification, YouTube
removed the video and sent Lenz an email on June 5,
2007, notifying her of the removal. On June 7, 2007,
Lenz attempted to restore the video by sending a
counter-notification to YouTube pursuant to § 512(g) (3).
2. “[T]he parties do not dispute that Lenz used copyrighted
material in her video or that Universal is the true owner of Prince’s
copyrighted music.” Lenz v. Universal Music Corp., 572 F. Supp. 2d
1150, 1153-54 (N.D. Cal. 2008).
6a
Appendix A
After YouTube provided this counter-notification to
Universal per § 512(g)(2)(B), Universal protested the
video’s reinstatement because Lenz failed to properly
acknowledge that her statement was made under penalty of
perjury, as required by § 512(g)(3)(C). Universal’s protest
reiterated that the video constituted infringement because
there was no record that “either she or YouTube were ever
granted licenses to reproduce, distribute, publicly perform
or otherwise exploit the Composition.” The protest made
no mention of fair use. After obtaining pro bono counsel,
Lenz sent a second counter-notification on June 27, 2007,
which resulted in YouTube’s reinstatement of the video
in mid-July.
II
Lenz filed the instant action on July 24, 2007, and
her Amended Complaint on August 15, 2007. After the
district court dismissed her tortious interference claim
and request for declaratory relief, Lenz filed her Second
Amended Complaint on April 18, 2008, alleging only a
claim for misrepresentation under § 512(f). The district
court denied Universal’s motion to dismiss the action.
On February 25, 2010, the district court granted
Lenz’s partial motion for summar y judg ment on
Universal’s six affirmative defenses, including the third
affirmative defense that Lenz suffered no damages. Both
parties subsequently moved for summary judgment on
Lenz’s § 512(f) misrepresentation claim. On January 24,
2013, the district court denied both motions in an order
that is now before us.
7a
Appendix A
The district court certified its summary judgment
order for interlocutory appeal under 28 U.S.C. § 1292(b),
and stayed proceedings in district court pending resolution
of the appeal. We granted the parties permission to bring
an interlocutory appeal.
III
We review de novo the district court’s denial of
summary judgment. When doing so, we “must determine
whether the evidence, viewed in a light most favorable
to the non-moving party, presents any genuine issues
of material fact and whether the district court correctly
applied the law.” Warren v. City of Carlsbad, 58 F.3d
439, 441 (9th Cir. 1995). On cross-motions for summary
judgment, we evaluate each motion independently, “giving
the nonmoving party in each instance the benefit of all
reasonable inferences.” ACLU v. City of Las Vegas, 333
F.3d 1092, 1097 (9th Cir. 2003).
When evaluating an interlocutory appeal, we “may
address any issue fairly included within the certified
order because it is the order that is appealable, and not
the controlling question identified by the district court.”
Yamaha Motor Corp., U.S.A. v. Calhoun, 516 U.S. 199,
205, 116 S. Ct. 619, 133 L. Ed. 2d 578 (1996) (emphasis in
original) (quotation omitted). We may therefore “address
those issues material to the order from which appeal has
been taken.” In re Cinematronics, Inc., 916 F.2d 1444, 1449
(9th Cir. 1990) (emphasis in original) (permitting appellate
review of a ruling issued prior to the order certified for
interlocutory appeal).
8a
Appendix A
IV
Effective on October 28, 1998, the DMCA added
new sections to existing copyright law by enacting five
Titles, only one of which is relevant here: Title II—Online
Copyright Infringement Liability Limitation Act—now
codified in 17 U.S.C. § 512. Sections 512(c), (f), and (g) are
at the heart of the parties’ dispute.
A
Section 512(c) permits service providers, e.g., YouTube
or Google, to avoid copyright infringement liability for
storing users’ content if—among other requirements—
the service provider “expeditiously” removes or disables
access to the content after receiving notification from a
copyright holder that the content is infringing. 17 U.S.C.
§ 512(c). Section 512(c)(3)(A) sets forth the elements
that such a “takedown notification” must contain. These
elements include identification of the copyrighted work,
identification of the allegedly infringing material, and,
critically, a statement that the copyright holder believes
in good faith the infringing material “is not authorized
by the copyright owner, its agent, or the law.” Id. § 512(c)
(3)(A). The procedures outlined in § 512(c) are referred to
as the DMCA’s “takedown procedures.”
To avoid liability for disabling or removing content, the
service provider must notify the user of the takedown. Id.
§ 512(g)(1)-(2). The user then has the option of restoring
the content by sending a counter-notification, which
must include a statement of “good faith belief that the
9a
Appendix A
material was removed or disabled as a result of mistake
or misidentification . . . .” Id. § 512(g)(3)(C). Upon receipt
of a valid counter-notification, the service provider must
inform the copyright holder of the counter-notification and
restore the content within “not less than 10, nor more than
14, business days,” unless the service provider receives
notice that the copyright holder has filed a lawsuit against
the user seeking to restrain the user’s infringing behavior.
Id. § 512(g)(2)(B)—(C). The procedures outlined in § 512(g)
are referred to as the DMCA’s “put-back procedures.”
If an entity abuses the DMCA, it may be subject
to liability under § 512(f). That section provides: “Any
person who knowingly materially misrepresents under
this section—(1) that material or activity is infringing,
or (2) that material or activity was removed or disabled
by mistake or misidentification, shall be liable for any
damages . . . .” Id. § 512(f). Subsection (1) generally applies
to copyright holders and subsection (2) generally applies
to users. Only subsection (1) is at issue here.
B
We must first determine whether 17 U.S.C. § 512(c)
(3)(A)(v) requires copyright holders to consider whether
the potentially infringing material is a fair use of a
copyright under 17 U.S.C. § 107 before issuing a takedown
notification. Section 512(c)(3)(A)(v) requires a takedown
notification to include a “statement that the complaining
party has a good faith belief that the use of the material
in the manner complained of is not authorized by the
copyright owner, its agent, or the law.” The parties
10a
Appendix A
dispute whether fair use is an authorization under the
law as contemplated by the statute—which is so far as
we know an issue of first impression in any circuit across
the nation. “Canons of statutory construction dictate that
if the language of a statute is clear, we look no further
than that language in determining the statute’s meaning.
. . . A court looks to legislative history only if the statute
is unclear.” United States v. Lewis, 67 F.3d 225, 228-29
(9th Cir. 1995) (citations omitted). We agree with the
district court and hold that the statute unambiguously
contemplates fair use as a use authorized by the law.
Fair use is not just excused by the law, it is wholly
authorized by the law. In 1976, Congress codified the
application of a four-step test for determining the fair use
of copyrighted works:
Notwithstanding the provisions of sections 106
and 106A, the fair use of a copyrighted work,
. . . for purposes such as criticism, comment,
news reporting, teaching (including multiple
copies for classroom use), scholarship, or
research, is not an infringement of copyright.
In determining whether the use made of a work
in any particular case is a fair use the factors
to be considered shall include—
(1) the purpose and character of the
use, including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
11a
Appendix A
(2) the nature of the copyrighted work;
(3) the amount and substantiality of
the portion used in relation to the
copyrighted work as a whole; and
(4) the effect of the use upon the
potential market for or value of the
copyrighted work.
The fact that a work is unpublished shall not
itself bar a finding of fair use if such finding
is made upon consideration of all the above
factors.
17 U.S.C. § 107 (emphasis added). The statute explains that
the fair use of a copyrighted work is permissible because
it is a non-infringing use.
While Title 17 of the United States Code (“Copyrights”)
does not define the term “authorize” or “authorized,”
“[w]hen there is no indication that Congress intended a
specific legal meaning for the term, the court may look
to sources such as dictionaries for a definition.” United
States v. Mohrbacher, 182 F.3d 1041, 1048 (9th Cir. 1999).
Black’s Law Dictionary defines “authorize” as “1. To give
legal authority; to empower” and “2. To formally approve;
to sanction.” Authorize, Black’s Law Dictionary (10th
ed. 2014). Because 17 U.S.C. § 107 both “empowers” and
“formally approves” the use of copyrighted material if
the use constitutes fair use, fair use is “authorized by the
law” within the meaning of § 512(c). See also 17 U.S.C.
12a
Appendix A
§ 108(f) (4) (“Nothing in this section in any way affects the
right of fair use as provided by section 107 . . . .” (emphasis
added)).
Universal’s sole textual argument is that fair use is
not “authorized by the law” because it is an affirmative
defense that excuses otherwise infringing conduct.
Universal’s interpretation is incorrect as it conflates
two different concepts: an affirmative defense that is
labeled as such due to the procedural posture of the case,
and an affirmative defense that excuses impermissible
conduct. Supreme Court precedent squarely supports the
conclusion that fair use does not fall into the latter camp:
“[A]nyone who . . . makes a fair use of the work is not an
infringer of the copyright with respect to such use.” Sony
Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
433, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984).
Given that 17 U.S.C. § 107 expressly authorizes fair
use, labeling it as an affirmative defense that excuses
conduct is a misnomer:
Although the traditional approach is to view
“fair use” as an affirmative defense, . . . it
is better viewed as a right granted by the
Copyright Act of 1976. Originally, as a judicial
doctrine without any statutory basis, fair use
was an infringement that was excused—this
is presumably why it was treated as a defense.
As a statutory doctrine, however, fair use is
not an infringement. Thus, since the passage
of the 1976 Act, fair use should no longer be
13a
Appendix A
considered an infringement to be excused;
instead, it is logical to view fair use as a right.
Regardless of how fair use is viewed, it is clear
that the burden of proving fair use is always on
the putative infringer.
Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22
(11th Cir. 1996); cf. Lydia Pallas Loren, Fair Use: An
Affirmative Defense?, 90 Wash. L. Rev. 685, 688 (2015)
(“Congress did not intend fair use to be an affirmative
defense—a defense, yes, but not an affirmative defense.”).
Fair use is therefore distinct from affirmative defenses
where a use infringes a copyright, but there is no liability
due to a valid excuse, e.g., misuse of a copyright, Practice
Management Information Corp. v. American Medical
Ass’n, 121 F.3d 516, 520 (9th Cir. 1997), and laches, Danjaq
LLC v. Sony Corp., 263 F.3d 942, 950-51 (9th Cir. 2001).
Universal concedes it must give due consideration
to other uses authorized by law such as compulsory
licenses. The introductory language in 17 U.S.C. § 112 for
compulsory licenses closely mirrors that in the fair use
statute. Compare 17 U.S.C. § 112(a)(1) (“Notwithstanding
the provisions of section 106, . . . it is not an infringement
of copyright for a transmitting organization entitled
to transmit to the public a performance or display
of a work . . . to make no more than one copy or
phonorecord of a particular transmission program
embodying the performance or display . . . .”), with id.
§ 107 (“Notwithstanding the provisions of sections 106
and 106A, the fair use of a copyrighted work . . . is not
an infringement of copyright.”). That fair use may be
14a
Appendix A
labeled as an affirmative defense due to the procedural
posture of the case is no different than labeling a license
an affirmative defense for the same reason. Compare
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 573, 114
S. Ct. 1164, 127 L. Ed. 2d 500 & n.3, 590 (1994) (stating
that “fair use is an affirmative defense” where the district
court converted a motion to dismiss based on fair use into
a motion for summary judgment), with A&M Records, Inc.
v. Napster, Inc., 239 F.3d 1004, 1025-26 (9th Cir. 2001)
(“Napster contends that . . . the district court improperly
rejected valid affirmative defenses of . . . implied license
. . . .”). Thus, Universal’s argument that it need not consider
fair use in addition to compulsory licenses rings hollow.
Even if, as Universal urges, fair use is classified as an
“affirmative defense,” we hold—for the purposes of the
DMCA—fair use is uniquely situated in copyright law so
as to be treated differently than traditional affirmative
defenses. We conclude that because 17 U.S.C. § 107 created
a type of non-infringing use, fair use is “authorized by the
law” and a copyright holder must consider the existence
of fair use before sending a takedown notification under
§ 512(c).
C
We must next determine if a genuine issue of
material fact exists as to whether Universal knowingly
misrepresented that it had formed a good faith belief the
video did not constitute fair use. This inquiry lies not in
whether a court would adjudge the video as a fair use, but
whether Universal formed a good faith belief that it was
not. Contrary to the district court’s holding, Lenz may
15a
Appendix A
proceed under an actual knowledge theory, but not under
a willful blindness theory.
1
Though Lenz argues Universal should have known the
video qualifies for fair use as a matter of law, our court
has already decided a copyright holder need only form a
subjective good faith belief that a use is not authorized.
Rossi v. Motion Picture Ass’n of Am. Inc., 391 F.3d 1000
(9th Cir. 2004). In Rossi, we explicitly held that “the ‘good
faith belief’ requirement in § 512(c)(3)(A)(v) encompasses
a subjective, rather than objective standard.” Id. at 1004.
We further held:
When enacting the DMCA, Congress could
have easily incorporated an objective standard
of reasonableness. The fact that it did not do so
indicates an intent to adhere to the subjective
standard traditionally associated with a good
faith requirement. . . .
In § 512(f), Congress included an expressly
limited cause of action for improper infringement
notifications, imposing liability only if the
copyright owner’s notification is a knowing
misrepresentation. A copyright owner cannot
be liable simply because an unknowing mistake
is made, even if the copyright owner acted
unreasonably in making the mistake. Rather,
there must be a demonstration of some actual
knowledge of misrepresentation on the part of
the copyright owner.
16a
Appendix A
Id. at 1004-05 (citations omitted). Neither of these holdings
are dictum. See United States v. Johnson, 256 F.3d 895,
914 (9th Cir. 2001) (en banc) (“[W]here a panel confronts
an issue germane to the eventual resolution of the case,
and resolves it after reasoned consideration in a published
opinion, that ruling becomes the law of the circuit,
regardless of whether doing so is necessary in some strict
logical sense.”). We therefore judge Universal’s actions by
the subjective beliefs it formed about the video.
2
Universal faces liability if it knowingly misrepresented
in the takedown notification that it had formed a good faith
belief the video was not authorized by the law, i.e., did not
constitute fair use. Here, Lenz presented evidence that
Universal did not form any subjective belief about the
video’s fair use—one way or another— because it failed
to consider fair use at all, and knew that it failed to do
so. Universal nevertheless contends that its procedures,
while not formally labeled consideration of fair use, were
tantamount to such consideration. Because the DMCA
requires consideration of fair use prior to sending a
takedown notification, a jury must determine whether
Universal’s actions were sufficient to form a subjective
good faith belief about the video’s fair use or lack thereof. 3
3. Although the panel agrees on the legal principles we
discuss herein, we part company with our dissenting colleague over
the propriety of resolving on summary judgment Universal’s claim
to subjective belief that the copyright was infringed. The dissent
would find that no triable issue of fact exists because Universal did
not specifically and expressly consider the fair-use elements of 17
17a
Appendix A
To be clear, if a copyright holder ignores or neglects
our unequivocal holding that it must consider fair use
before sending a takedown notification, it is liable for
damages under § 512(f). If, however, a copyright holder
forms a subjective good faith belief the allegedly infringing
material does not constitute fair use, we are in no position
to dispute the copyright holder’s belief even if we would
have reached the opposite conclusion. A copyright holder
who pays lip service to the consideration of fair use
by claiming it formed a good faith belief when there is
evidence to the contrary is still subject to § 512(f) liability.
Cf. Disney Enters., Inc. v. Hotfile Corp., No. 11-cv-20427,
2013 U.S. Dist. LEXIS 172339, 2013 WL 6336286, at *48
(S.D. Fla. Sept. 20, 2013) (denying summary judgment of
§ 512(f) counterclaim due to “sufficient evidence in the
record to suggest that [Plaintiff] Warner intentionally
targeted files it knew it had no right to remove”); Rosen v.
Hosting Servs., Inc., 771 F. Supp. 2d 1219, 1223 (C.D. Cal.
2010) (denying summary judgment of § 512(f) counterclaim
where the takedown notification listed four URL links
that did not contain content matching the description of
the purportedly infringed material); Online Policy Grp.
v. Diebold, Inc., 337 F. Supp. 2d 1195, 1204-05 (N.D. Cal.
2004) (“[T]here is no genuine issue of fact that Diebold
knew—and indeed that it specifically intended—that its
letters to OPG and Swarthmore would result in prevention
U.S.C. § 107. But the question is whether the analysis Universal did
conduct of the video was sufficient, not to conclusively establish as
a matter of law that the video’s use of Let’s Go Crazy was fair, but
to form a subjective good faith belief that the video was infringing
on Prince’s copyright. And under the circumstances of this case,
that question is for the jury, not this court, to decide.
18a
Appendix A
of publication of that content. . . . The fact that Diebold
never actually brought suit against any alleged infringer
suggests strongly that Diebold sought to use the DMCA’s
safe harbor provisions—which were designed to protect
ISPs, not copyright holders—as a sword to suppress
publication of embarrassing content rather than as a shield
to protect its intellectual property.”).
3
We hold the willful blindness doctrine may be used
to determine whether a copyright holder “knowingly
materially misrepresent[ed]” that it held a “good faith
belief” the offending activity was not a fair use. See
17 U.S.C. § 512(c)(3)(A)(v), (f). “[T]he willful blindness
doctrine may be applied, in appropriate circumstances, to
demonstrate knowledge or awareness of specific instances
of infringement under the DMCA.” Viacom Int’l, Inc. v.
YouTube, Inc., 676 F.3d 19, 35 (2d Cir. 2012) (interpreting
how a party can establish the “actual knowledge”—a
subjective belief—required by § 512(c)(1)(A)(I)); see also
UMG Recordings, Inc. v. Shelter Capital Partners LLC,
718 F.3d 1006, 1023 (9th Cir. 2013) (“Of course, a service
provider cannot willfully bury its head in the sand to avoid
obtaining such specific knowledge.” (citing Viacom, 676
F.3d at 31)). But, based on the specific facts presented
during summary judgment, we reject the district court’s
conclusion that Lenz may proceed to trial under a willful
blindness theory.
To demonstrate willful blindness a plaintiff must
establish two factors: “(1) the defendant must subjectively
19a
Appendix A
believe that there is a high probability that a fact exists
and (2) the defendant must take deliberate actions to avoid
learning of that fact.” Global-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754, 131 S. Ct. 2060, 2070, 179 L. Ed. 2d 1167
(2011). “Under this formulation, a willfully blind defendant
is one who takes deliberate actions to avoid confirming a
high probability of wrongdoing and who can almost be said
to have actually known the critical facts.” Id. at 2070-71.
To meet the Global-Tech test, Lenz must demonstrate a
genuine issue as to whether—before sending the takedown
notification—Universal (1) subjectively believed there was
a high probability that the video constituted fair use, and
(2) took deliberate actions to avoid learning of this fair use.
On summary judgment Lenz failed to meet a threshold
showing of the first factor. To make such a showing,
Lenz must provide evidence from which a juror could
infer that Universal was aware of a high probability the
video constituted fair use. See United States v. Yi, 704
F.3d 800, 805 (9th Cir. 2013). But she failed to provide
any such evidence. The district court therefore correctly
found that “Lenz does not present evidence suggesting
Universal subjectively believed either that there was a
high probability any given video might make fair use of
a Prince composition or her video in particular made fair
use of Prince’s song ‘Let’s Go Crazy.’” Yet the district
court improperly denied Universal’s motion for summary
judgment on the willful blindness theory because
Universal “has not shown that it lacked a subjective
belief.” By finding blame with Universal’s inability to
show that it “lacked a subjective belief,” the district court
improperly required Universal to meet its burden of
20a
Appendix A
persuasion, even though Lenz had failed to counter the
initial burden of production that Universal successfully
carried. See Celotex Corp. v. Catrett, 477 U.S. 317, 322,
106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986); Nissan Fire &
Marine Ins. Co. v. Fritz Cos., Inc., 210 F.3d 1099, 1102
(9th Cir. 2000). Lenz may not therefore proceed to trial
on a willful blindness theory.
V
Section 512(f) provides for the recovery of “any
damages, including costs and attorneys[‘] fees, incurred
by the alleged infringer . . . who is injured by such
misrepresentation, as the result of the service provider
relying upon such misrepresentation in removing or
disabling access to the material or activity claimed to be
infringing . . . .” 17 U.S.C. § 512(f). We hold a plaintiff may
seek recovery of nominal damages for an injury incurred
as a result of a § 512(f) misrepresentation.
Universal incorrectly asserts that Lenz must
demonstrate she incurred “actual monetary loss.” Section
512(k) provides a definition for “monetary relief” as
“damages, costs, attorneys[‘] fees, and any other form of
monetary payment.” The term “monetary relief” appears
in § 512(a), (b)(1), (c)(1), and (d), but is notably absent from
§ 512(f). As a result, the damages an alleged infringer may
recover under § 512(f) from “any person” are broader than
monetary relief.4 Cf. United States v. James, 478 U.S. 597,
4. Title I of the DMCA specifies recovery for “actual damages.”
17 U.S.C. § 1203(c)(1)(A). If Congress intended to similarly limit
the recovery of § 512(f) damages to pecuniary losses, it could have
chosen to do so.
21a
Appendix A
605, 106 S. Ct. 3116, 92 L. Ed. 2d 483 (1986) (“Congress’
choice of the language ‘any damage’ . . . undercuts a
narrow construction.”), abrogated on other grounds by
Cent. Green Co. v. United States, 531 U.S. 425, 121 S.
Ct. 1005, 148 L. Ed. 2d 919 (2001). Because Congress
specified the recovery of “any damages,” we reject
Universal’s contention that Congress did not indicate its
intent to depart from the common law presumption that a
misrepresentation plaintiff must have suffered a monetary
loss. See Keene Corp. v. United States, 508 U.S. 200, 208,
113 S. Ct. 2035, 124 L. Ed. 2d 118 (1993) (“Where Congress
includes particular language in one section of a statute but
omits it in another, it is generally presumed that Congress
acts intentionally and purposely in the disparate inclusion
or exclusion.” (quotation omitted)).
Lenz may seek recovery of nominal damages
due to an unquantifiable harm suffered as a result of
Universal’s actions. 5 The DMCA is akin to a statutorily
created intentional tort whereby an individual may
recover nominal damages for a “knowingly material
misrepresent[ation] under this section [512].” 17 U.S.C. §
512(f); cf. Memphis Cmty. Sch. Dist. v. Stachura, 477 U.S.
299, 305, 106 S. Ct. 2537, 91 L. Ed. 2d 249 (1986) (“We have
repeatedly noted that 42 U.S.C. § 1983 creates a species
of tort liability in favor of persons who are deprived of
rights, privileges, or immunities secured to them by the
Constitution. Accordingly, when § 1983 plaintiffs seek
5. Lenz may not recover nominal damages for “impairment of
free speech rights.” No authority supports the recovery of nominal
damages caused by a private actor’s chilling of free speech rights. All
of the cases Lenz cites address challenges to governmental action.
22a
Appendix A
damages for violations of constitutional rights, the level of
damages is ordinarily determined according to principles
derived from the common law of torts.” (quotation and
citations omitted)).
“In a number of common law actions associated with
intentional torts, the violation of the plaintiff’s right has
generally been regarded as a kind of legal damage in
itself. The plaintiff who proves an intentional physical
tort to the person or to property can always recover
nominal damages.” 3 Dan B. Dobbs et al., The Law of Torts
§ 480 (2d ed. 2011). The tort need not be physical in order
to recover nominal damages. Defamation, for example,
permits the recovery of nominal damages:
A nominal damage award can be justified in
a tort action only if there is some reason for
awarding a judgment in favor of a claimant
who has not proved or does not claim a
compensable loss with sufficient certainty to
justify a recovery of compensatory or actual
damages. There may be such a reason in an
action for defamation, since a nominal damage
award serves the purpose of vindicating the
plaintiff’s character by a verdict of the jury that
establishes the falsity of the defamatory matter.
W. Page Keeton et al., Prosser and Keeton on Torts
§ 116A, at 845 (5th ed. 1984). Also, individuals may recover
nominal damages for trespass to land, even though the
trespasser’s “presence on the land causes no harm to the
land [or] its possessor . . . .” Restatement (Second) of Torts
§ 163 & cmts. d, e (1965).
23a
Appendix A
The district court therefore properly concluded in its
2010 order:
The use of “any damages” suggests strongly
Congressional intent that recovery be available
for damages even if they do not amount to . . .
substantial economic damages . . . . Requiring
a plaintiff who can [show that the copyright
holder knowingly misrepresented its subjective
good faith] to demonstrate in addition not only
that she suffered damages but also that those
damages were economic and substantial would
vitiate the deterrent effect of the statute.
Lenz v. Universal Music Corp., No. C 07-3783 JF, 2010
U.S. Dist. LEXIS 16899, 2010 WL 702466, at *10 (N.D.
Cal. Feb. 25, 2010). Relying on this opinion, the Southern
District of Florida held the same. Hotfile, 2013 U.S.
Dist. LEXIS 172339, 2013 WL 6336286, at *48 (“[T]he
Court observes that the quantity of economic damages to
Hotfile’s system is necessarily difficult to measure with
precision and has led to much disagreement between the
parties and their experts. Notwithstanding this difficulty,
the fact of injury has been shown, and Hotfile’s expert can
provide the jury with a non-speculative basis to assess
damages.”).
We agree that Lenz may vindicate her statutorily
created rights by seeking nominal damages. Because a
jury has not yet determined whether Lenz will prevail
at trial, we need not decide the scope of recoverable
damages, i.e., whether she may recover expenses following
24a
Appendix A
the initiation of her § 512(f) suit or pro bono costs and
attorneys’ fees, both of which arose as a result of the
injury incurred.
VI
Copy right holders cannot shirk their duty to
consider—in good faith and prior to sending a takedown
notification—whether allegedly infringing material
constitutes fair use, a use which the DMCA plainly
contemplates as authorized by the law. That this step
imposes responsibility on copyright holders is not a reason
for us to reject it. Cf. Consumer Prod. Safety Comm’n v.
GTE Sylvania, Inc., 447 U.S. 102, 123-24, 100 S. Ct. 2051,
64 L. Ed. 2d 766 (1980) (“[A]ny increased burdens imposed
on the Commission as a result of its compliance with [the
Consumer Product Safety Act] were intended by Congress
in striking an appropriate balance between the interests
of consumers and the need for fairness and accuracy with
respect to information disclosed by the Commission. Thus,
petitioners’ claim that the Commission’s compliance with
the requirements of [the Act] will impose undue burdens
on the Commission is properly addressed to Congress,
not to this Court.”). We affirm the district court’s order
denying the parties’ cross-motions for summary judgment.
AFFIRMED. Each party shall bear its own costs.
25a
Appendix A
M. SMITH, Circuit Judge, concurring in part and
dissenting in part:
I concur in all but Part IV.C of the majority opinion.
However, I disagree with the majority’s conclusion that
“whether Universal’s actions were sufficient to form a
subjective good faith belief about the video’s fair use or
lack thereof” presents a triable issue of fact. Universal
admittedly did not consider fair use before notifying
YouTube to take down Lenz’s video. It therefore could
not have formed a good faith belief that Lenz’s video
was infringing, and its notification to the contrary was a
knowing material misrepresentation. Accordingly, I would
hold that Lenz is entitled to summary judgment.
I agree with the majority’s conclusion that § 512(c)
(3)(A)(v) requires copyright holders to consider whether
potentially infringing material is a fair use before issuing
a takedown notice. As the majority explains, a takedown
notice must contain “[a] statement that the complaining
party has a good faith belief that use of the material
in the manner complained of is not authorized by the
copyright owner, its agent, or the law.” 17 U.S.C. § 512(c)
(3)(A)(v). Because fair use of copyrighted material is not
an infringement of copyright, such use is “authorized by
. . . the law.” See id. § 107. Therefore, in order to form “a
good faith belief that use of the material in the manner
§ 512(c)(3)(A)(v), a party must consider the doctrine of fair
use. I also agree with the majority that § 512(f) provides
a party injured by a violation of § 512(c)(3)(A)(v) with a
right of action for damages, including nominal damages.
26a
Appendix A
However, I part ways with the majority on two issues.
First, I would clarify that § 512(f)’s requirement that a
misrepresentation be “knowing[]” is satisfied when the
party knows that it is ignorant of the truth or falsity of
its representation. Second, I would hold that Universal’s
actions were insufficient as a matter of law to form a
subjective good-faith belief that Lenz’s video was not a
fair use.
I
Section 512(f) requires that a misrepresentation
be “knowing[]” to incur liability. In my view, when
the misrepresentation concerns § 512(c)(3)(A)(v), the
knowledge requirement is satisfied when the party knows
that it has not considered fair use. That is, Universal need
not have known that the video was a fair use, or that its
actions were insufficient to form a good-faith belief about
fair use. It need only have known that it had not considered
fair use as such.6
As the majority explains, we have previously held
in Rossi v. Motion Picture Ass’n of Am. Inc. that
“the ‘good faith belief’ requirement in § 512(c)(3)(A)
(v) encompasses a subjective, rather than objective,
standard.” 391 F.3d 1000, 1004 (9th Cir. 2004). Rossi
reasoned that a subjective standard comported with
6. I do not believe that, in this regard, my construction conflicts
with that of the majority. Although the majority does not squarely
address § 512(f)’s scienter requirement, it leaves for the jury only
the question “whether Universal’s actions were sufficient to form a
subjective good faith belief about the video’s fair use or lack thereof.”
27a
Appendix A
§ 512(f)’s requirement that actionable misrepresentations
be “knowing[]”, and ultimately held that liability under
§ 512(f ) requires “a demonstration of some actual
knowledge of misrepresentation on the part of the
copyright owner.” 391 F.3d at 1005.
Universal urges us to construe Rossi to mean that
liability attaches under § 512(f) only if a party subjectively
believes that its assertion is false. But under long-settled
principles of deceit and fraudulent misrepresentation, a
party need only know that it is ignorant of the truth or
falsity of its representation for its misrepresentation to
be knowing. For example, in Cooper v. Schlesinger, 111
U.S. 148, 155 (1884), the Supreme Court explained that
“a statement recklessly made, without knowledge of
its truth, [is] a false statement knowingly made, within
the settled rule.”1 Similarly, under the common law, “[a]
misrepresentation is fraudulent if the maker . . . knows
or believes that the matter is not as he represents it to
be, . . . [or] knows that he does not have the basis for his
representation that he states or implies.” Restatement
(Second) of Torts § 526 (emphasis added). 2
1. See also Sovereign Pocahontas Co. v. Bond, 120 F.2d 39,
39–40 (D.C. Cir. 1941); Knickerbocker Merch. Co. v. United States,
13 F.2d 544, 546 (2d Cir. 1926); L J Mueller Furnace Co. v. Cascade
Foundry Co., 145 F. 596, 600 (3d Cir. 1906); Hindman v. First Nat’l
Bank, 112 F. 931, 944 (6th Cir. 1902).
2 . T he S e c ond R e st at e ment r e fe r s t o “ f r audu lent
misrepresentation,” rather than “knowing” misrepresentation. See
Restatement (Second) of Torts § 526. However, as the Restatement
clarifies, the requirement that a misrepresentation be “fraudulent”
refers “solely” to the party’s knowledge of misrepresentation. See
28a
Appendix A
One who asserts a belief that a work is infringing
without considering fair use lacks a basis for that belief.
It follows that one who knows that he has not considered
fair use knows that he lacks a basis for that belief. That is
sufficient “actual knowledge of misrepresentation” to meet
the scienter requirement of § 512(f). See Rossi, 391 F.3d
at 1005. Thus, to be held liable under § 512(f), Universal
need only have failed to consider fair use, and known that
it had failed to consider fair use.
II
It is undisputed that Universal’s policy was to issue a
takedown notice where a copyrighted work was used as
“the focus of the video” or “prominently featured in the
video.” By Universal’s own admission, its agents were not
instructed to consider whether the use was fair. Instead,
Universal directed its agents to spare videos that had “a
second or less of a Prince song” or where the song was
“distorted beyond reasonable recognition.” And yet, from
this, the majority concludes that “whether Universal’s
actions were sufficient to form a subjective good faith
belief about the video’s fair use or lack thereof” presents
a triable issue of fact.
I respectfully disagree. The Copyright Act explicitly
enumerates the factors to be considered in assessing
whether use of copyrighted material is fair. 17 U.S.C.
§ 107. Universal’s policy was expressly to determine
id. cmt. a. The Restatement’s definition of “fraudulent” is therefore
persuasive authority for construing the meaning of “knowingly.”
29a
Appendix A
whether a video made “significant use”—not fair use—of
the work. Nothing in Universal’s methodology considered
the purpose and character of the use, the commercial or
noncommercial nature of the use, or whether the use would
have a significant impact on the market for the copyrighted
work. 3 See § 107. There is therefore no disputed issue of
fact: Universal did not consider fair use before issuing a
takedown notice.
Moreover, Universal knew it had not considered fair
use, because § 107 explicitly supplies the factors that
“shall” be considered in determining whether a use is
fair. Id. I see no reason in law or logic to excuse copyright
holders from the general principle that knowledge of the
law is presumed. See United States v. Int’l Minerals &
Chem. Corp., 402 U.S. 558, 562–63 (1971) (holding that
the use of the word knowingly” did not evince a legislative
intent to “carv[e] out an exception to the general rule that
ignorance of the law is no excuse”). As explained above,
3. Had Universal properly considered the statutory elements
of fair use, there is no doubt that it would have concluded that Lenz’s
use of Let’s Go Crazy was fair. See, e.g., TCA Television Corp. v.
McCollum, 2015 WL 9255341 (S.D.N.Y. Dec. 17, 2015) (finding on a
motion to dismiss that the use in a Broadway show of one minute and
seven seconds of the Abbott and Costello routine Who’s On First?
was fair because the use was “highly transformative” and unlikely
to usurp the market for the original); SOFA Entm’t, Inc. v. Dodger
Prods., Inc., 709 F.3d 1273 (9th Cir. 2013) (affirming summary
judgment that use of a seven-second clip of The Ed Sullivan Show
was fair for similar reasons). Universal’s “significant use” analysis,
by contrast, is more like determining whether a use is de minimis,
a much more stringent test than fair use. See Sandoval v. New Line
Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998).
30a
Appendix A
that is sufficient in my view to conclude that Universal’s
takedown notice was a knowing misrepresentation.
Based on Rossi’s holding that a subjective good-faith
belief in infringement is sufficient to satisfy § 512(c)(3)
(A)(v), 391 F.3d at 1005, the majority disagrees. But the
majority’s reading of Rossi would insulate from liability
any subjective belief in infringement, no matter how
poorly formed. Rossi did not abrogate the statutory
requirement that the belief be held in good faith. I would
therefore hold that a belief in infringement formed
consciously without considering fair use is no good-faith
belief at all. See Cooper, 111 U.S. at 155 (holding that such
a belief is a knowing misrepresentation). And to assert in
good faith that a use is not fair, a party must consider the
statutory elements of fair use set forth in § 107. Merely
evaluating whether a use is “significant” is not enough.
The majority’s unfortunate interpretation of § 512(f)
would permit a party to avoid liability with only the most
perfunctory attention to fair use. Such a construction
eviscerates § 512(f) and leaves it toothless against frivolous
takedown notices. And, in an era when a significant
proportion of media distribution and consumption takes
place on third-party safe harbors such as YouTube,4 if a
creative work can be taken down without meaningfully
considering fair use, then the viability of the concept of
4. See Statistics, YouTube, https://www.youtube.com/yt/press/
statistics.html (last visited Feb. 2, 2016) (reporting that “every day
people watch hundreds of millions of hours on YouTube” and that
YouTube “reaches more 18–34 and 18–49 year-olds than any cable
network in the U.S.”).
31a
Appendix A
fair use itself is in jeopardy. Such a construction of § 512(f)
cannot comport with the intention of Congress.
***
In sum: Universal represented that it had formed a
goodfaith belief that Lenz’s video was an infringement
of copyright—that is, that the video was not fair use.
Because Universal did not actually consider the factors
constituting fair use, its representation was false—a
misrepresentation. Because those factors are set forth in
§ 107 (and § 107 expressly states that a fair use “is not an
infringement of copyright”), Universal’s misrepresentation
was knowing. And because there is no further disputed
issue of fact concerning liability, I respectfully dissent.
32a
B the united
Appendix B —Appendix
ORDER of
states District Court for the Northern
District of California, San Jose Division,
FILED jANUARY 24, 2013
United States District Court
for the Northern District of
California, San Jose Division
Case No. 5:07-cv-03783-JF
STEPHANIE LENZ,
Plaintiff,
v.
UNIVERSAL MUSIC CORPORATION,
UNIVERSAL MUSIC PUBLISHING, INC. AND
UNIVERSAL MUSIC PUBLISHING GROUP,
Defendants.
January 24, 2013, Decided; January 24, 2013, Filed
ORDER DENYING CROSS-MOTIONS FOR
SUMMARY JUDGMENT
Plaintiff Stephanie Lenz (“Lenz”) and Defendants
Universal Music Corporation, Universal Music Publishing,
Inc., and Universal Music Publishing Group (collectively,
“Universal”) each move for summary judgment. The Court
has considered the briefing, the admissible evidence, and
33a
Appendix B
the oral argument presented at the hearing on October
16, 2012. For the reasons discussed below, the motions
will be denied.
I. BACKGROUND
The facts giving rise to this action are undisputed
except as noted otherwise. On February 7, 2007, Lenz
videotaped her young children in her family’s kitchen. The
song “Let’s Go Crazy” by the artist known as “Prince”
played in the background. During the video, Lenz’s son is
shown walking with the aid of a push-toy and “dancing”
to the song. Lenz can be heard asking, “what do you think
of the music?” On February 8, 2007, Lenz uploaded the
twenty-nine second video to YouTube.com (“YouTube”),
a popular Internet video hosting site. She titled the video
“Let’s Go Crazy #1.”
Universal is a music publishing company that
administers composition copyrights for hundreds of
songwriters. In 2007, Universal administered copyrights
for Prince. Universal monitored YouTube regularly for
unauthorized use of Prince’s works. Universal’s head of
business affairs, Robert Allen (“Allen”), assigned the task of
monitoring YouTube to Sean Johnson (“Johnson”). Johnson
entered the titles of the most popular Prince songs into
the YouTube search field, reviewing each returned video
to determine whether it used one or more of the songs in
an unauthorized or infringing manner. If it did, Johnson
included the video on a removal list. The removal lists
subsequently were sent to YouTube with a request that the
identified videos be removed from the YouTube site.
34a
Appendix B
After reviewing Lenz’s video, Johnson included it on
the then-current removal list. Allen instructed another
Universal employee, Alina Moffat (“Moffat”), to transmit
the list to YouTube via email. On June 4, 2007, Moffat
incorporated the list into a standard email format that
Universal used when requesting that YouTube remove
videos that Universal considered infringing. She sent the
email (hereinafter “Takedown Notice”) to copyright@
youtube.com, an email address identified in YouTube’s
Terms of Service as intended solely for the purpose of
receiving notifications of claimed infringement under the
Digital Millennium Copyright Act (“DMCA”), 17 U.S.C.
§ 512.
On June 4, 2007, YouTube sent Lenz an email
notifying her that it had removed her “Let’s Go Crazy #1”
video in response to Universal’s accusation of copyright
infringement. YouTube advised Lenz of the DMCA
counter-notification procedures and warned her that
repeated incidents of copyright infringement could lead
to the deletion of her account and all of her posted videos.
On June 7, 2007, Lenz sent YouTube a DMCA counternotice. Because that counter-notice did not contain all of
the elements required under 17 U.S.C. § 512(g), YouTube
did not restore the video to its website at that time. Lenz
then retained counsel, who helped her send YouTube
a second DMCA counter-notice on June 27, 2007. That
counter-notice asserted that the video constituted fair use
of “Let’s Go Crazy.” YouTube restored the video to its site
in mid-July 2007. The video was down for approximately
six weeks. As of the date of this order, the video has been
viewed on YouTube more than 1.2 million times.
35a
Appendix B
Lenz filed the present action against Universal in July
2007. Her operative second amended complaint asserts a
single claim for misrepresentation pursuant to 17 U.S.C.
§ 512(f). Both she and Universal seek summary judgment
with respect to that claim.
II. LEGAL STANDARD
A motion for summary judgment should be granted if
“there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 247-48, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
The moving party bears the initial burden of informing
the Court of the basis for the motion and identifying
the portions of “depositions, documents, electronically
stored information, affidavits or declarations, stipulations
(including those made for purposes of the motion only),
admissions, interrogatory answers, or other materials”
that demonstrate the absence of a triable issue of material
fact. Fed. R. Civ. P. 56(c)(1)(A); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d
265 (1986). If the moving party meets this initial burden,
the burden shifts to the non-moving party to present
specific facts showing that there is a genuine issue for
trial. Celotex, 477 U.S. at 324. A genuine issue for trial
exists if the non-moving party presents evidence from
which a reasonable jury, viewing the evidence in the light
most favorable to that party, could resolve the material
issue in his or her favor. Anderson, 477 U.S. 242, 248-49,
106 S. Ct. 2505, 91 L. Ed. 2d 202; Barlow v. Ground, 943
F.2d 1132, 1134-36 (9th Cir. 1991).
36a
Appendix B
III. DISCUSSION
The DMCA limits service providers’ liability “for
infringement of copyright by reason of the storage at the
direction of a user of material that resides on a system
or network controlled or operated by or for the service
provider.” 17 U.S.C. § 512(c)(1). This “safe harbor” provision
applies if the service provider meets certain requirements
and, upon receiving a “notification of claimed infringement,”
“responds expeditiously to remove, or disable access to,
the material that is claimed to be infringing or to be the
subject of infringing activity.” 17 U.S.C. § 512(c)(1)(C). To
be effective, a notification of claimed infringement sent to
the service provider must include inter alia “[a] statement
that the complaining party has a good faith belief that
use of the material in the manner complained of is not
authorized by the copyright owner, its agent, or the law.”
17 U.S.C. § 512(c)(3)(A)(v) (emphasis added). “Any person
who knowingly materially misrepresents under this section
. . . that material or activity is infringing” may be liable
for resulting damages incurred by the alleged infringer.
17 U.S.C. § 512(f). To be recoverable, the damages must
be “incurred by the alleged infringer . . . who is injured
by such misrepresentation, as the result of the service
provider relying upon such misrepresentation in removing
or disabling access to the material or activity claimed to
be infringing.” Id. Lenz claims that Universal’s Takedown
Notice was a “notification of claimed infringement”
pursuant to the DMCA, that it constituted a knowing,
material misrepresentation that her video infringed
Prince’s copyright, and that she incurred damages as a
result of YouTube’s removal of her video from its site.
37a
Appendix B
A. Applicability of the DMCA
As an initial matter, the parties dispute whether the
DMCA applies at all in this case. As noted above, the
DMCA imposes liability upon “[a]ny person who knowingly
materially misrepresents under this section . . . that
material or activity is infringing.” 17 U.S.C. § 512(f)
(emphasis added). Lenz asserts that Universal’s Takedown
Notice was a “notification of claimed infringement” under
§ 512 and thus that any material misrepresentations
contained therein were made “under this section,”
that is, under the DMCA. Universal contends that its
Takedown Notice did not constitute a “notification of
claimed infringement” under § 512 and thus that any
misrepresentations contained therein cannot give rise to
DMCA liability.
As relevant here, YouTube’s Terms of Use required
that DMCA procedures be used to request removal of
videos from YouTube.1 Dkt. Entry 398, Miksch Decl., Ex.
N (Terms of Use), § 8. The Terms of Use summarized the
DMCA’s provisions governing notification of copyright
infringement and stated that such notifications should
be sent to YouTube’s designated Copyright Agent. Id.
The Copyright Agent’s email address was given as:
[email protected]. Id. Notably, the Terms of Use
1. Although Universal later entered into a contract with
YouTube that granted Universal contractual rights with respect
to removal of videos, Universal did not have any such contractual
rights at the time that it sent the Takedown Notice. Dkt. Entry 456,
Miksch Decl., Ex. FF (Universal-YouTube contract effective June
28, 2007); Ex. Q2 (Allen Depo) at 72:4-13.
38a
Appendix B
stated that only DMCA notices should be sent to the
Copyright Agent, and that any other communications
should be directed to YouTube customer service through
http://www.google.com/support/youtube. Id.
Universal does not dispute that its Takedown Notice
complied with these provisions and was sent to the email
address designated for receipt of DMCA notifications
of copyright infringement. However, it asserts that its
Takedown Notice complied with YouTube’s Terms of
Use – and thus with the DMCA – only because YouTube
required such compliance. Universal points out that the
Takedown Notice also contained the following language:
This email does not constitute a waiver of
any right to recover damages incurred by
virtue of any such unauthorized activities, and
such rights as well as claims for other relief
are expressly retained. In addition, our use
of YouTube’s required notice form does not
indicate we believe that the above referenced
copyright infringement is within the scope
of the Digital Millennium Copyright Act
(“DMCA”). Our use of this form, as required
by YouTube, is meant to facilitate YouTube’s
removal of the infringing material listed above
and is not meant to suggest or imply that
YouTube’s activities and services are within
the scope of the DMCA safe harbor.
Dkt. Entry 398, Miksch Decl., Ex. P. (Takedown Notice of
June 4, 2007) (emphasis added). Allen, who ultimately was
39a
Appendix B
responsible for Universal’s notices to YouTube, testified
that he did not believe that the Takedown Notice was sent
pursuant to the DMCA. Dkt. Entry 449, Klaus Decl., Ex.
3 (Allen Depo.) at 78:2-15.
Universal appears to be arguing that it invoked the
DMCA process only because YouTube’s Terms of Use
required that the process be utilized to request removal of
allegedly infringing content, and that because it expressly
reserved its rights, the request was not made “pursuant”
to the DMCA. Universal does not explain why it could not
have addressed its concerns with YouTube’s Terms of Use
directly with YouTube as provided in the Terms of Use
themselves, nor does it point to any authority suggesting
that its subjective intent is relevant to the legal adequacy
of the Takedown Notice for purposes of the statute.
Universal also argues that YouTube is ineligible
for the protection of the DMCA’s safe harbor provision.
Specifically, Universal contends that YouTube’s activities
in uploading, hosting, and transmitting videos do not
constitute “storage at the direction of the user” as
specified in § 512(c)(1). Universal acknowledges that
the Second Circuit has held to the contrary in Viacom
Int’l, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012). In
Viacom, the court concluded that YouTube’s conversion
of videos into a standard display format, playback of
videos on “watch” pages, and “related videos” function
are encompassed within the term “storage at the direction
of the user” as used in § 512(c)(1). Id. at 38-39. Universal
also acknowledges that the Ninth Circuit has rejected
a similar § 512(c)(1) challenge asserted by Universal in
40a
Appendix B
UMG Recordings, Inc. v. Shelter Capital Partners LLC,
667 F.3d 1022 (9th Cir. 2011). See id. at 1031-35. However,
Universal notes that a petition for rehearing en banc in
UMG Recording remains pending and that the parties
have been directed to submit briefing on the impact
of Viacom in connection with that petition. Universal
suggests that this Court delay resolution of the present
cross-motions pending further action by the Ninth Circuit.
Lenz contends that UMG Recordings has no bearing on
the present dispute because YouTube was not a defendant in
that case and that this Court simply should apply Viacom.
While it is not clear that UMG Recordings is irrelevant
to the present litigation, the Court is not inclined to stay
resolution of the present motions, particularly given the
lengthy pendency of this litigation, based upon the mere
possibility that Universal’s petition for rehearing en banc
might be granted. In light of the record evidence and the
current state of the law, the Court concludes that YouTube
qualifies for protection under the DMCA safe harbor and
that Universal’s Takedown Notice constituted a “notification
of claimed infringement” under the DMCA.
B. Material Misrepresentation
A s discussed above, a notif ication of claimed
infringement sent to a service provider under § 512(c)
must include inter alia “[a] statement that the complaining
party has a good faith belief that use of the material in the
manner complained of is not authorized by the copyright
owner, its agent, or the law.” 17 U.S.C. § 512(c)(3)(A)(v).
Universal’s Takedown Notice stated as follows:
41a
Appendix B
We believe your service is hosting the abovereferenced files on its network. These files are
offering video recordings in an interactive
streaming for mat that embody musical
compositions written by the artist known as
Prince. We have a good faith belief that the
above-described activity is not authorized by
the copyright owner, its agent, or the law.
Dkt. Entry 398, Miksch Decl., Ex. P. (Takedown Notice
of June 4, 2007) (emphasis added). Lenz asserts that this
statement was a knowing, material misrepresentation
under § 512(f) because, given its procedures for reviewing
videos before requesting that they be removed, Universal
could not have formed a good faith belief that Lenz’s video
did not constitute fair use.
1.Fair Use Doctrine
This Court held early in the present litigation that a
copyright owner must consider fair use before proceeding
with a takedown notice under the DMCA:
[I]n order for a copyright owner to proceed
under the DMCA with “a good faith belief that
use of the material in the manner complained
of is not authorized by the copyright owner,
its agent, or the law,” the owner must evaluate
whether the material makes fair use of the
copyright. 17 U.S.C. § 512(c)(3)(A)(v). An
allegation that a copyright owner acted in bad
faith by issuing a takedown notice without
42a
Appendix B
proper consideration of the fair use doctrine
thus is sufficient to state a misrepresentation
claim pursuant to Section 512(f) of the DMCA.
Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150,
1154-55 (N.D. Cal. 2008). 2
Lenz presents substantial evidence that Universal did
not consider explicitly whether her video made fair use of
Prince’s song before it sent the Takedown Notice. Johnson,
the only person at Universal who reviewed YouTube videos
for violations of Prince’s copyrights, described his practice
as follows: “I put a video on the list that embodied a Prince
composition in some way if the – there was a significant
use of it, of the composition, specifically if the song was
recognizable, was in a significant portion of the video or
was the focus of the video. Dkt. Entry 452, Miksch Decl.,
Ex. R (Johnson Depo.) 60:17-22. He did not put a video on
the list if it had only “a second or less of a Prince song,
2. Universal claims that in light of the Ninth Circuit’s recent
discussion of fair use in Monge v. Maya Magazines, Inc., 688 F.3d
1164 (9th Cir. 2012), the question of whether a particular use is
“authorized by law” does not involve consideration of the fair use
doctrine. Addressing fair use in a case in which the doctrine was
asserted as an affirmative defense, Monge held that, “This affirmative
defense presumes that unauthorized copying has occurred, and is
instead aimed at whether the defendant’s use was fair.” Id. at 1170.
Universal argues that if the fair use doctrine does not come into play
unless a use is “unauthorized,” then by definition fair use cannot be
an “authorized” use for purposes of the DMCA. However, while it
does provide some support for Universal’s position, Monge is not a
DMCA case, and it does not address the unique statutory language
at issue here.
43a
Appendix B
literally a one line, half line of a Prince song,” or if it was
shot in a noisy environment like a bar where the song was
playing “deep in the background.” Id. at 62:4-10, 63:3-15.
Johnson’s decision to put Lenz’s video on the removal list
was based upon the facts that: it was titled “Let’s Go Crazy
#1”; he recognized the song in the background “right off
the bat”; the song was loud and played through the entire
video; and the audio track included a voice asking the
children whether they liked the music. Id. at 75:16-76:7,
79:7-20. Johnson made no mention of fair use during his
testimony and gave no indication that he considered fair
use before deciding whether to place Lenz’s video on the
removal list. Id.
The guidelines that Allen described when testifying on
behalf of Universal likewise make no mention of fair use:
The general guidelines are that when a writer
is upset or requests that particular videos be
removed from YouTube that we review the video
to ensure that the composition was the focus of
the video and if it was we then notify YouTube
that the video should be removed.
Dkt. Entry 452, Miksch Decl., Ex. Q (Allen Depo.) at
61:1-6. In its supplemental response to Lenz’s requests
for admission, Universal admitted that as of June 4, 2007
– the date of the Takedown Notice – it had not instructed
Johnson to consider fair use during his review of YouTube
videos. Dkt. Entry 398, Miksch Decl., Ex. H (Supp. Resp.
to RFAs) at 18.
44a
Appendix B
This evidence is sufficient to establish that Universal
issued its Takedown Notice without considering fair use.
Universal nonetheless contends that although Johnson was
not instructed to and did not consider fair use per se, he
did consider a number of factors that would be relevant to
a fair use determination. In general, such factors include:
(1) whether there was a transformative noncommercial
purpose; (2) the nature of the copyrighted work; (3) the
amount and substantiality of the use of the copyrighted
work; and (4) the effect on the market for the copyrighted
work. 17 U.S.C. § 107. Johnson testified that he considered
whether Lenz’s video made “significant use” of Prince’s
song and whether the song was the “focus” of the video.
See Dkt. Entry 452, Miksch Decl., Ex. R (Johnson Depo.)
60:17-22. Universal argues that Johnson’s consideration of
these and other factors relevant to a fair use analysis is
sufficient to meet a requirement that a copyright owner
consider fair use before proceeding under the DMCA.
Citing the Ninth Circuit’s recent statement that “[t]he
fair use doctrine has been called the most troublesome in
the whole law of copyright,” Monge v. Maya Magazines,
Inc., 688 F.3d 1164, 1170 (9th Cir. 2012), Universal argues
that requiring anything more would be inconsistent with
the relatively uncomplicated review process envisioned by
this Court, see Lenz, 572 F. Supp. 2d at 1155.
While it agrees that requiring a copyright holder to
engage in a full-blown fair use analysis prior to sending
a DMCA takedown notice would be inconsistent with the
remedial purposes of the statute, the Court disagrees that
it is sufficient for a copyright holder to consider facts that
might be relevant to a fair use analysis without making
45a
Appendix B
any effort to evaluate the significance of such facts in
the context of the doctrine itself. Because the question
of whether something constitutes fair use is a “legal
judgment,” Monge, 688 F.3d at 1183, proper consideration
of the doctrine must include at least some analysis of the
legal import of the facts. The Court concludes that at
minimum, for the reasons discussed at length in its prior
order, see Lenz, 572 F. Supp. 2d at 1154-56, a copyright
owner must make at least an initial assessment as to
whether the fair use doctrine applies to the use in question
in order to make a good faith representation that the use
is not “authorized by law.”
2.Effect Of Universal’s Failure To Consider Fair
Use Doctrine
Lenz asserts that under the law of the case, Universal’s
admitted failure to consider fair use before sending its
Takedown Notice is sufficient to establish liability under
§ 512(f). Universal disputes this assertion, relying upon
the Ninth Circuit’s holding in Rossi v. Motion Picture
Assoc. of America, Inc., 391 F.3d 1000 (9th Cir. 2004).
In Rossi, the court held that “the ‘good faith belief’
requirement in § 512(c)(3)(A)(v) encompasses a subjective,
rather than objective, standard.” Id. at 1004. The plaintiff
in that case asserted that had the defendant conducted
a reasonable investigation into the plaintiff’s allegedly
offending website, the defendant necessarily would have
realized that there was no copyright infringement. Id. at
1003. The Court of Appeals concluded that “[a] copyright
owner cannot be liable simply because an unknowing
mistake is made, even if the copyright owner acted
46a
Appendix B
unreasonably in making the mistake.” Id. at 1005. “Rather,
there must be a demonstration of some actual knowledge of
misrepresentation on the part of the copyright owner.” Id.
In light of Rossi, it appears that Universal’s mere failure
to consider fair use would be insufficient to give rise to
liability under § 512(f). Lenz thus must demonstrate that
Universal had some actual knowledge that its Takedown
Notice contained a material misrepresentation.
This Court’s prior order contemplated imposition of
§ 512(f) liability upon a showing that the copyright owner
“acted in bad faith by issuing a takedown notice without
proper consideration of the fair use doctrine.” Lenz, 572
F. Supp. 2d at 1155. A bad faith requirement would be
consistent with Rossi’s subjective standard. However,
Lenz points out that neither the DMCA nor the applicable
case law uses the term “bad faith.” Instead, both frame
the inquiry in terms of whether the party that issued
the takedown notice had a “good faith belief” that use of
the copyrighted work was unauthorized. See 17 U.S.C.
§ 512(c)(3)(A)(v) (providing that a notification of claimed
infringement sent to the service provider must include
“[a] statement that the complaining party has a good faith
belief that use of the material in the manner complained
of is not authorized by the copyright owner, its agent,
or the law.”) (emphasis added); Rossi, 391 F.3d at 1004
(discussing the “good faith belief” requirement of § 512(c)
(3)(A)(v)). Lenz contends that Universal could not have
formed a good faith belief that her use of Prince’s song
was not fair use because Universal’s takedown procedures
ignored the question of fair use entirely.
47a
Appendix B
Essentially, Lenz asserts that Universal’s procedures
for evaluating copyright infringement were so deficient
that Universal willfully blinded itself as to whether any
given video might constitute fair use. “Willful blindness
is tantamount to knowledge.” Viacom, 676 F.3d at 34;
see also Aimster Copyright Litig., 334 F.3d 643, 650 (7th
Cir. 2003) (“Willful blindness is knowledge, in copyright
law . . . as it is in the law generally.”). She argues that a
showing of willful blindness would be sufficient to show an
absence of good faith under Rossi’s subjective standard. 3
In order to establish willful blindness on the part of
a defendant, a plaintiff must establish two factors: “(1)
the defendant must subjectively believe that there is a
high probability that a fact exists and (2) the defendant
must take deliberate actions to avoid learning of that
fact.” Global Tech. Appliances, Inc. v. SEB SA, 131
S.Ct. 2060, 2070, 179 L. Ed. 2d 1167 (2011). “Under this
formulation, a willfully blind defendant is one who takes
deliberate actions to avoid confirming a high probability
3. At the hearing, Lenz’s counsel suggested that something
less than willful blindness might be sufficient, arguing that the
Rossi standard could be met simply by showing that on this record
Universal could not have formed a good faith belief that fair use
did not apply, because Universal did not consider fair use at all.
However, as noted above, an inadvertent failure to consider fair use
would be insufficient to impose § 512 liability in light of Rossi. Lenz
must demonstrate “some actual knowledge of misrepresentation”
on the part of Universal. Since the record is devoid of evidence that
Universal subjectively believed that fair use might apply to Lenz’s
video, the Court concludes that the only other avenue available to
Lenz is to show that Universal willfully blinded itself to the potential
application of the fair use doctrine.
48a
Appendix B
of wrongdoing and who can almost be said to have actually
known the critical facts.” Id. at 2070-71.
Addressing the second factor first, Lenz presents
evidence, discussed above, that Universal assigned the
task of reviewing YouTube postings for infringing uses
of Prince’s songs to a single person who was not given
any information or training about fair use. A trier of fact
could conclude based on this evidence that Universal took
deliberate actions to avoid learning whether any particular
use of one of Prince’s works was protected by the fair use
doctrine.
However, Lenz does not present evidence suggesting
that Universal subjectively believed either that there was
a high probability that any given video might make fair
use of a Prince composition or that her video in particular
made fair use of Prince’s song “Let’s Go Crazy.” Lenz
argues that her video was “self-evident” fair use and that
Universal must have known it constituted fair use when it
sent the Takedown Notice. However, as the Ninth Circuit
recently has observed, the process of making a fair use
determination “is neither a mechanistic exercise nor a
gestalt undertaking, but a considered legal judgment.”
Monge, 688 F.3d at 1183. A legal conclusion that fair use
was “self-evident” necessarily would rest upon an objective
measure rather than the subjective standard required by
Rossi. Indeed, Universal presents evidence that Lenz
herself initially did not view her claim as involving fair
use. See Dkt. Entry 400, Klaus Decl., Ex. 1 (Lenz’s Blog).4
4. Plaintiff objects to Universal’s citation to this evidence,
asserting that the relevant inquiry is what Universal believed, not
49a
Appendix B
Accordingly, the Court concludes that Lenz is not
entitled to summary judgment based on the theory that
Universal willfully blinded itself to the possibility that her
video constituted fair use of Prince’s song. Nor is Universal
entitled to summary judgment, as it has not shown that it
lacked a subjective belief that there was a high probability
that any given video might make fair use of a Prince
composition. Lenz is free to argue that a reasonable actor
in Universal’s position would have understood that fair use
was “self-evident,” and that this circumstance is evidence
of Universal’s alleged willful blindness. Universal likewise
is free to argue that whatever the alleged shortcomings
of its review process might have been, it did not act with
the subjective intent required by §512(f).
C.Damages
Universal contends that even if its Takedown Notice
did contain a material misrepresentation sufficient to give
rise to liability under the DMCA, it nonetheless is entitled
to summary judgment because Lenz cannot demonstrate
that she suffered any damages. Lenz asserts that this
Court already has held that she was damaged by YouTube’s
removal of her video. In its order dated February 25, 2010,
the Court granted partial summary judgment with respect
to a number of Universal’s affirmative defenses, including
Universal’s third affirmative defense asserting that Lenz had
not suffered any damages. The Court reasoned as follows:
what Lenz or anyone else believed. This objection is overruled.
Plaintiff’s initial impression that fair use did not apply in this case
is relevant to her assertion that fair use is so “self-evident” that
Universal must have known that the doctrine does apply.
50a
Appendix B
Universal has challenged Lenz’s claim that her
pre-suit activities, which included “time spent
reviewing counternotice procedures, seeking
the assistance of counsel, and responding to the
takedown notice,” (Pl.’s MSJ), involved actual
expense or economic loss.
Universal does not claim that Lenz did not take
these actions or incur any damages in doing
so. As discussed above, the Court concludes
that actual expenses or economic losses of
some minimum value are not necessary under
the statute. Accordingly, because there is no
genuine issue of material fact as to whether
Lenz incurred some damages as defined under
the statute, Lenz’s motion will be granted as to
Universal’s affirmative defense of no damages.
Lenz v. Universal Music Corp., 2010 U.S. Dist. LEXIS
16899, 2010 WL 702466, at *11-13 (N.D. Cal. Feb. 25, 2010).
Universal correctly points out that the record is more
developed now than it was at the time the Court issued its
prior order, and that Lenz’s damages theory has evolved
over time. Universal argues that on the current record
the Court may conclude as a matter of law that Lenz did
not incur any damages recoverable under § 512.
Lenz asserts three categories of damages: loss of
YouTube’s hosting services and chilling of her free speech,
lost time and resources, and attorneys’ fees and costs.
With respect to the first category, Universal submits
51a
Appendix B
evidence that YouTube services were available to Lenz at
no cost and that Lenz did not care that YouTube declined
to host her video. See Dkt. Entry 400, Klaus Decl., Ex.
3 (email) (“I don’t care that YouTube doesn’t want to
host it. Not like I’m paying them.”). Lenz states in her
declaration that as a result of the takedown of her video,
she recorded videos of her children less frequently, and
felt that her freedom to express herself through video
had been restricted. Dkt. Entry 392, Lenz Decl., ¶ 10.
She seeks nominal damages for the chilling of her free
speech rights. However, the cases upon which she relies
raised challenges to government action. For example,
Yniguez v. Arizonans for Official English, 69 F.3d 920
(9th Cir. 1995) (en banc), vacated on other grounds,
520 U.S. 43, 117 S. Ct. 1055, 137 L. Ed. 2d 170 (1997),
involved a suit by a state employee against the state. The
plaintiff was awarded nominal damages.5 Lenz invites this
Court to extend the reach of such cases to the conduct
of private actors in the DMCA context. However, absent
some authority supporting such an extension, the Court
declines the invitation. Accordingly, the Court concludes
that Lenz cannot demonstrate damages based upon the
loss of YouTube’s hosting services and the chilling of her
free speech.
Lenz claims that, “In total, I spent at least ten hours
before filing this lawsuit on obtaining counsel, figuring
out how to send – and sending – the first counternotice to
5. The holding in another case relied upon by Lenz, PhelpsRoper v. City of Manchester, 738 F. Supp. 2d 947 (E.D. Mo. Sept. 8,
2010), was reversed and vacated after briefing on the present motions
was completed, see 697 F.3d 678 (8th Cir. 2012).
52a
Appendix B
YouTube, sending the second counternotice to YouTube,
and ensuring that my video was restored to YouTube.”
Dkt. Entry 392, Lenz Decl., ¶ 9. She requests that she be
compensated for that time at minimum wage, although
she admittedly did not lose any actual wages. She goes on
to state that, “Most, if not all, of this work was completed
on my personal computer.”
Apparently there is no reported case that indicates
definitively whether Lenz may recover for the time and
resources that she herself expended in attempting to
have her video reinstated under the DMCA’s counternotice procedures. Universal argues that Lenz may not
recover damages for her expenditure of her own time
and resources, citing the Restatement (Second) of Torts,
§§ 525, 549 (1977), for the proposition that pecuniary loss
is an element of a claim for misrepresentation. However,
it is not clear that the pecuniary loss requirement applies
to a statutory claim brought under the DMCA. Lenz must
have incurred at least minimal expenses for electricity to
power her computer, internet and telephone bills, and the
like, that potentially could be recoverable under § 512(f).
Permitting recovery of such damages would be consistent
with this Court’s earlier conclusion that “[t]he use of ‘any
damages’ [in the statute] suggests strongly Congressional
intent that recovery be available for damages even if they
do not amount to . . . substantial economic damages.”
Lenz, 2010 U.S. Dist. LEXIS 16899, 2010 WL 702466,
at *10. As the Court has noted, requiring a plaintiff who
has demonstrated a misrepresentation actionable under
the DMCA “to demonstrate in addition not only that
she suffered damages but also that those damages were
53a
Appendix B
economic and substantial would vitiate the deterrent effect
of the statute.” Id.
Finally, Lenz claims that she incurred attorneys’ fees
for pre-litigation work done in responding to the Takedown
Notice. Attorney Marcia Hoffman states in her declaration
that she works for the Electronic Frontier Foundation
(“EFF”), that she spent 4.25 hours helping Lenz respond
to the Takedown Notice prior to commencement of
litigation, and that at her normal billing rate the fees
incurred total $1,275. Dkt. Entry 393, Hoffman Decl., ¶¶
1-7. While those fees were pro bono, it is not clear that
they cannot form the basis of a damages claim here. Lenz
points to language in her retainer agreement with EFF
requiring her to assign any recovery up to the full amount
of the EFF’s fees and expenses. Dkt. Entry 446, Klaus
Decl., Ex. 34 (Retainer Agreement). It may be that Lenz
may recover the pro bono fees as an element of damages
if she prevails on her DMCA claim. The cases cited by the
parties are not dispositive on this issue.6
In summary, the Court concludes that Universal has
not established that Lenz is precluded from recovering
6. Universal argues that counsel’s prelitigation work was so
intertwined with the litigation that the fees are not recoverable
under the Court’s prior ruling that fees incurred for litigation
are not recoverable. See Lenz, 2010 U.S. Dist. LEXIS 16899,
2010 WL 702466, at *11. Universal does not cite authority holding
that “intertwined” fees are not recoverable, and the Court is not
prepared to conclude on this record that in fact the prelitigation
and post litigation fees are so intertwined that the former would be
unrecoverable under the Court’s prior ruling.
54a
Appendix B
any damages for her DMCA claim. This ruling is without
prejudice to a motion for judgment as a matter of law
under Federal Rule of Civil Procedure 50, if and when
such motion is appropriate.
IV. ORDER
For the foregoing reasons, the cross-motions for
summary judgment are DENIED.
DATED: 1/24/2013
/s/ JEREMY FOGEL
United States District Judge
55a
C statutory
Appendix c —Appendix
relevant
provisions
17 U.S.C.A. § 106
§ 106. Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of
copyright under this title has the exclusive rights to do
and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or
phonorecords;
(2) to prepare derivative works based upon the
copyrighted work;
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other transfer
of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion
pictures and other audiovisual works, to perform the
copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial,
graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual work,
to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio
transmission.
56a
Appendix C
17 U.S.C.A. § 107
§ 107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A,
the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as
criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research,
is not an infringement of copyright. In determining
whether the use made of a work in any particular case is
a fair use the factors to be considered shall include-(1) the purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used
in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for
or value of the copyrighted work.
The fact that a work is unpublished shall not itself
bar a finding of fair use if such finding is made upon
consideration of all the above factors.
57a
Appendix C
17 U.S.C.A. § 512
§ 512. Limitations on liability relating to material online
***
(c) Information residing on systems or networks at
direction of users.-(1) In general.--A service provider shall not be
liable for monetary relief, or, except as provided in
subsection (j), for injunctive or other equitable relief,
for infringement of copyright by reason of the storage
at the direction of a user of material that resides on a
system or network controlled or operated by or for the
service provider, if the service provider-(A)(i) does not have actual knowledge that the
material or an activity using the material on the
system or network is infringing;
(ii) in the absence of such actual knowledge, is
not aware of facts or circumstances from which
infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness,
acts expeditiously to remove, or disable access to,
the material;
(B) does not receive a financial benefit directly
attributable to the infringing activity, in a case in
which the service provider has the right and ability
to control such activity; and
58a
Appendix C
(C) upon notification of claimed infringement as
described in paragraph (3), responds expeditiously
to remove, or disable access to, the material that
is claimed to be infringing or to be the subject of
infringing activity.
(2) Designated agent.--The limitations on liability
established in this subsection apply to a service
provider only if the service provider has designated an
agent to receive notifications of claimed infringement
described in paragraph (3), by making available
through its service, including on its website in a
location accessible to the public, and by providing
to the Copyright Office, substantially the following
information:
(A) the name, address, phone number, and electronic
mail address of the agent.
(B) other contact information which the Register of
Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current
directory of agents available to the public for
inspection, including through the Internet, and may
require payment of a fee by service providers to cover
the costs of maintaining the directory.
(3) Elements of notification.-(A) To be effective under this subsection, a
notification of claimed infringement must be a
59a
Appendix C
written communication provided to the designated
agent of a service provider that includes substantially
the following:
(i) A physical or electronic signature of a person
authorized to act on behalf of the owner of an
exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed
to have been infringed, or, if multiple copyrighted
works at a single online site are covered by a single
notification, a representative list of such works at
that site.
(iii) Identification of the material that is claimed
to be infringing or to be the subject of infringing
activity and that is to be removed or access to
which is to be disabled, and information reasonably
sufficient to permit the service provider to locate
the material.
(iv) Information reasonably sufficient to permit
the service provider to contact the complaining
party, such as an address, telephone number, and,
if available, an electronic mail address at which the
complaining party may be contacted.
(v) A statement that the complaining party has
a good faith belief that use of the material in the
manner complained of is not authorized by the
copyright owner, its agent, or the law.
60a
Appendix C
(vi) A statement that the information in the
notification is accurate, and under penalty of
perjury, that the complaining party is authorized
to act on behalf of the owner of an exclusive right
that is allegedly infringed.
(B)(i) Subject to clause (ii), a notification from a
copyright owner or from a person authorized to
act on behalf of the copyright owner that fails
to comply substantially with the provisions of
subparagraph (A) shall not be considered under
paragraph (1)(A) in determining whether a service
provider has actual knowledge or is aware of facts
or circumstances from which infringing activity
is apparent.
(ii) In a case in which the notification that is
provided to the service provider’s designated agent
fails to comply substantially with all the provisions
of subparagraph (A) but substantially complies with
clauses (ii), (iii), and (iv) of subparagraph (A), clause
of this subparagraph applies only if the service
provider promptly attempts to contact the person
making the notification or takes other reasonable
steps to assist in the receipt of notification that
substantially complies with all the provisions of
subparagraph (A).
***
(f) Misrepresentations.--Any person who knowingly
materially misrepresents under this section--
61a
Appendix C
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled
by mistake or misidentification,
shall be liable for any damages, including costs and
attorneys’ fees, incurred by the alleged infringer, by
any copyright owner or copyright owner’s authorized
licensee, or by a service provider, who is injured by such
misrepresentation, as the result of the service provider
relying upon such misrepresentation in removing or
disabling access to the material or activity claimed to be
infringing, or in replacing the removed material or ceasing
to disable access to it.
(g) Replacement of removed or disabled material and
limitation on other liability.-(1) No liability for taking down generally.--Subject
to paragraph (2), a service provider shall not be liable
to any person for any claim based on the service
provider’s good faith disabling of access to, or removal
of, material or activity claimed to be infringing or
based on facts or circumstances from which infringing
activity is apparent, regardless of whether the material
or activity is ultimately determined to be infringing.
(2) Exception.--Paragraph (1) shall not apply with
respect to material residing at the direction of a
subscriber of the service provider on a system or
network controlled or operated by or for the service
provider that is removed, or to which access is disabled
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by the service provider, pursuant to a notice provided
under subsection (c)(1)(C), unless the service provider-(A) takes reasonable steps promptly to notify the
subscriber that it has removed or disabled access to
the material;
(B) upon receipt of a counter notification described
in paragraph (3), promptly provides the person who
provided the notification under subsection (c)(1)(C)
with a copy of the counter notification, and informs
that person that it will replace the removed material
or cease disabling access to it in 10 business days; and
(C) replaces the removed material and ceases
disabling access to it not less than 10, nor more than
14, business days following receipt of the counter
notice, unless its designated agent first receives
notice from the person who submitted the notification
under subsection (c)(1)(C) that such person has
filed an action seeking a court order to restrain
the subscriber from engaging in infringing activity
relating to the material on the service provider’s
system or network.
(3) Contents of counter notification.--To be effective
under this subsection, a counter notification must
be a written communication provided to the service
provider’s designated agent that includes substantially
the following:
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Appendix C
(A) A physical or electronic signature of the
subscriber.
(B) Identification of the material that has been
removed or to which access has been disabled and
the location at which the material appeared before
it was removed or access to it was disabled.
(C) A statement under penalty of perjury that the
subscriber has a good faith belief that the material
was removed or disabled as a result of mistake or
misidentification of the material to be removed or
disabled.
(D) The subscriber’s name, address, and telephone
number, and a statement that the subscriber consents
to the jurisdiction of Federal District Court for the
judicial district in which the address is located, or
if the subscriber’s address is outside of the United
States, for any judicial district in which the service
provider may be found, and that the subscriber
will accept service of process from the person who
provided notification under subsection (c)(1)(C) or an
agent of such person.
(4) Limitation on other liability.--A service provider’s
compliance with paragraph (2) shall not subject the
service provider to liability for copyright infringement
with respect to the material identified in the notice
provided under subsection (c)(1)(C).